Click-To-Call Technologies, Lp v. Ingenio, Inc.

United States Court of Appeals

for the Federal Circuit

______________________

CLICK-TO-CALL TECHNOLOGIES, LP,

Appellant

v.

INGENIO, INC., YELLOWPAGES.COM, LLC,

Appellees

ANDREI IANCU, UNDER SECRETARY OF

COMMERCE FOR INTELLECTUAL PROPERTY

AND DIRECTOR OF THE UNITED STATES

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________

2015-1242

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2013-

00312.

______________________

Decided: August 16, 2018

______________________

PETER J. AYERS, Law Office of Peter J. Ayers, Austin,

TX, for appellant.

STANLEY JOSEPH PANIKOWSKI, III, DLA Piper US LLP,

San Diego, CA, argued for all appellees. Appellees Ingen-

io, Inc., YellowPages.com, LLC represented by MITCHELL

2 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

G. STOCKWELL, Kilpatrick Townsend & Stockton LLP,

Atlanta, GA. Appellee YellowPages.com, LLC also repre-

sented by DAVID CLAY HOLLOWAY.

MOLLY R. SILFEN, Office of the Solicitor, United States

Patent and Trademark Office, Alexandria, VA, argued for

intervenor. Also represented by SARAH E. CRAVEN, MARY

L. KELLY, THOMAS W. KRAUSE.

______________________

Before O’MALLEY and TARANTO, Circuit Judges, and

STARK, Chief District Judge *.

Opinion for the court filed by Circuit Judge O’MALLEY, in

which TARANTO, Circuit Judge, and STARK, Chief District

Judge, join.

Footnote 3 of the opinion is joined by PROST, Chief Judge,

NEWMAN, MOORE, O’MALLEY, REYNA, WALLACH, TARANTO,

CHEN, HUGHES, and STOLL, Circuit Judges.

Opinion concurring in footnote 3 of the opinion filed by

Circuit Judge TARANTO.

Opinion dissenting from footnote 3 of the opinion filed by

Circuit Judge DYK, in which Circuit Judge LOURIE joins.

O’MALLEY, Circuit Judge.

This long-marooned case returns to us after a voyage

alongside two others interpreting the scope of 35 U.S.C.

§ 314(d)’s “No Appeal” provision and its applicability to

time-bar determinations under 35 U.S.C. § 315(b): Cuoz-

zo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016),

and Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364

(Fed. Cir. 2018) (en banc). Because we have held en banc

*The Honorable Leonard P. Stark, Chief District

Judge, United States District Court for the District of

Delaware, sitting by designation.

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 3

“that the time-bar determinations under § 315(b) are

appealable,” Wi-Fi One, 878 F.3d at 1367, we address for

the first time the merits of Appellant Click-to-Call Tech-

nologies, LP’s (“CTC”) contention that the Patent Trial

and Appeal Board (“Board”) erred in determining that an

inter partes review (“IPR”) petition challenging claims of

CTC’s patent was not time-barred under § 315(b).

We conclude that the Board committed legal error in

rendering its § 315(b) determination, and reject the

proposed, alternative grounds for affirmance. Because

the subject petition was time-barred, the Board lacked

jurisdiction to institute the IPR proceedings. Accordingly,

we vacate the Board’s Final Written Decision in Oracle

Corp. v. Click-to-Call Technologies LP, No. IPR2013-

00312 (P.T.A.B. Oct. 28, 2014), Paper No. 52 (Final Writ-

ten Decision), and remand with instructions to dismiss

IPR2013-00312.

I. BACKGROUND

A. The District Court Actions

On June 8, 2001, Inforocket.Com, Inc. (“Inforocket”),

the exclusive licensee of U.S. Patent No. 5,818,836 (“the

’836 patent”), filed a civil action in the United States

District Court for the Southern District of New York.

Compl., Inforocket.Com, Inc. v. Keen, Inc., CA No. 1:01-cv-

05130-LAP (S.D.N.Y.), ECF No. 1 (Inforocket Action).

Inforocket served a complaint asserting infringement of

the ’836 patent on defendant Keen, Inc. (“Keen”) on

September 14, 2001. Affidavit of Service, Inforocket

Action, ECF No. 4.

Shortly thereafter, Keen brought its own infringement

suit against Inforocket based on U.S. Patent No.

6,223,165, which proceeded before the same district judge

as the Inforocket Action. See generally Keen, Inc. v. In-

forocket.Com, Inc., CA No. 1:01-cv-8226-LAP (S.D.N.Y.)

(Keen Action). In the Keen Action, the district court

4 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

granted Inforocket’s motion for summary judgment of

noninfringement and entered judgment in favor of In-

forocket in July 2002. See Order Granting Inforocket’s

Mot. for Summ. J., Keen Action, ECF No. 47; Judgment,

Keen Action, ECF No. 48. Keen filed a Notice of Appeal to

this court on August 23, 2002. Notice of Appeal, Keen

Action, ECF No. 49.

In 2003, while its appeal was pending, Keen acquired

Inforocket as its wholly-owned subsidiary. Thereafter,

subject to the terms of the merger, Inforocket and Keen

stipulated to a voluntary dismissal of both suits “without

prejudice,” and the district court dismissed both actions

on the same day—March 21, 2003. See Stipulation and

Order of Dismissal, Inforocket Action; Stipulation and

Order of Dismissal, Keen Action. 1 Later in 2003, Keen

changed its name to Ingenio, Inc. (“Ingenio”).

On April 20, 2004, Ingenio requested ex parte reexam-

ination of claims 1–21 of the ’836 patent. The Director of

the Patent & Trademark Office (“Director”) granted

Ingenio’s request, and issued an ex parte reexamination

certificate on December 30, 2008. Several claims were

cancelled, others were determined to be patentable as

amended, and new claims 22–30 were added.

Meanwhile, in late 2007, non-party AT&T announced

its plan to acquire Ingenio and integrate Ingenio and

YellowPages.com, also owned by AT&T. In January 2008,

Ingenio was acquired by a subsidiary of AT&T Inc. and its

name was changed to Ingenio, LLC (also “Ingenio”). In

April 2012, AT&T sold its interest in YellowPages.com

and Ingenio.

1 The appeal in the Keen Action was also dismissed

by agreement of the parties on March 19, 2003, under

Fed. R. App. P. 42(b). Keen, Inc. v. Inforocket.Com, Inc.,

60 F. App’x 809 (Fed. Cir. 2003).

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 5

CTC subsequently acquired the ’836 patent, and, on

May 29, 2012, asserted patent infringement claims

against multiple parties in the United States District

Court for the Western District of Texas. Compl., Click-to-

Call Techs. LP v. AT&T, Inc., No. 1:12-cv-00465-LY (W.D.

Tex.), ECF No. 1 (AT&T Action); Compl., Click-to-Call

Techs. LP v. Oracle Corp., No. 1:12-cv-00468-LY (W.D.

Tex.), ECF No. 1 (Oracle Action). Among the defendants

named in the AT&T Action was Ingenio, which subse-

quently changed its name to YP Interactive LLC (“YP

Interactive”). Both the AT&T Action and the Oracle

Action are currently stayed.

B. The IPR Proceedings

On May 28, 2013, Ingenio, together with Oracle Corp.,

Oracle OTC Subsidiary LLC, and YellowPages.com LLC

(together, “Petitioners” or “Appellees”), 2 filed a single IPR

petition challenging claims of the ’836 patent on anticipa-

tion and obviousness grounds. CTC filed its Preliminary

2 As we discuss in Section II(D)(2), infra, Petition-

ers identified themselves as a singular “Petitioner” in

their IPR petition. For simplicity, we refer to the collec-

tive as “Petitioners” in this Opinion. We use this conven-

tion even though Oracle Corp. and Oracle OTC Subsidiary

LLC filed an unopposed motion to withdraw from further

participation in this appeal on June 14, 2018, after set-

tling their disputes with CTC. See Mot. to Withdraw, No.

15-1242 (Fed. Cir. June 14, 2018), ECF No. 121. These

entities noted that their “motion does not affect the par-

ticipation of the non-Oracle Appellees, YellowPages.com

LLC and YP Interactive LLC, in this appeal.” Id. at 1. As

neither the other Petitioners’ participation in this appeal

nor the outcome of this case would be affected by granting

the Oracle entities’ requested relief, we granted their

motion. See Order Granting Mot. to Withdraw, No. 15-

1242 (Fed. Cir. July 24, 2018), ECF No. 123.

6 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

Response on August 30, 2013, contending, among other

things, that § 315(b) statutorily barred institution of IPR

proceedings, and that Ingenio lacked standing under 37

C.F.R. § 42.101(b). In its Preliminary Response, CTC

presented evidence that Ingenio was served with a com-

plaint alleging infringement of the ’836 patent in 2001.

The Board held a conference call with counsel for CTC

and Petitioners in September 2013, in part to discuss

CTC’s § 315(b) argument. The Board then issued an

order pursuant to 37 C.F.R. § 42.5 in which it requested

additional briefing addressing the terms of the dismissal

of the Inforocket Action. Both parties submitted addition-

al briefing in compliance with the Board’s request.

The Board issued its Institution Decision on October

30, 2013. With respect to the § 315(b) issue, the Board

acknowledged that Ingenio was served with a complaint

alleging infringement of the ’836 patent on June 8, 2001

and found CTC’s timeline of events “helpful in determin-

ing whether Ingenio, LLC is barred from filing an inter

partes review of the ’836 patent.” J.A. 287. The Board

then recited the language of § 315(b), and stated that the

“statute requires that the service date of the complaint be

more than one year before the petition was filed—in this

case more than one year before May 28, 2013.” J.A. 288.

Notwithstanding the above, the Board concluded that

CTC “has not established that service of the complaint in

the [Inforocket Action] bars Ingenio, LLC from pursuing

an inter partes review for the ’836 patent” because that

infringement suit was “dismissed voluntarily without

prejudice on March 21, 2003, pursuant to a joint stipula-

tion under Fed. R. Civ. P. 41(a).” J.A. 288–89. The Board

wrote that “[t]he Federal Circuit consistently has inter-

preted the effect of such dismissals as leaving the parties

as though the action had never been brought,” citing this

court’s decisions in Graves v. Principi, 294 F.3d 1350

(Fed. Cir. 2002), and Bonneville Associates, Ltd. Partner-

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 7

ship v. Barram, 165 F.3d 1360 (Fed. Cir. 1999). J.A. 289.

The Board also relied on Wright & Miller’s Federal Prac-

tice and Procedure treatise for the proposition that, “as

numerous federal courts have made clear, a voluntary

dismissal without prejudice under Rule 41(a) leaves the

situation as if the action never had been filed.” J.A. 289

(quoting 9 Wright, Miller, Kane, and Marcus, Federal

Prac. & Proc. Civ. § 2367 (3d ed.)). The Board concluded

by determining that “the dismissal of the infringement

suit brought by Inforocket against Keen—now Ingenio,

LLC—nullifies the effect of the service of the complaint

and, as a consequence, does not bar Ingenio, LLC or any

of the other Petitioners from pursuing an inter partes

review of the ’836 patent.” J.A. 289. In light of this

determination, the Board did not address the following

two contingent questions: (1) whether the patent at issue

in the Inforocket Action is the same patent at issue in the

IPR due to amendments made in the interim; and

(2) whether § 315(b)’s time bar should be determined on a

“petitioner-by-petitioner” basis. J.A. 289–90.

CTC requested rehearing of this § 315(b) determina-

tion, but the Board denied its request. CTC filed its

Patent Owner Response on January 16, 2014, addressing

the merits of Petitioners’ unpatentability arguments and

again requesting dismissal of the petition because the

Board lacked statutory authority to review the ’836 patent

under § 315(b), and because Petitioners lacked standing

under 37 C.F.R. § 42.101(b).

The Board issued its Final Written Decision on Octo-

ber 28, 2014, reaffirming its conclusion that Petitioners

were not barred from filing an IPR petition by stating

that, “because [the Inforocket Action] was dismissed

without prejudice, Federal Circuit precedent interprets

such a dismissal as leaving the parties in the same legal

position as if the underlying complaint had never been

served.” Final Written Decision at *7. The Board also

determined that claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23,

8 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

26, 29, and 30 either were anticipated by or would have

been obvious in view of certain prior art references. Id. at

*14. Those merits determinations are not at issue in this

appeal.

C. The History of this Appeal

CTC filed its Notice of Appeal on November 25, 2014,

and briefing commenced shortly thereafter. In April

2015, the Director intervened solely to address the

§ 315(b) time bar issue. See Intervenor Docketing State-

ment, No. 15-1242 (Fed. Cir. Apr. 1, 2015), ECF No. 28.

On October 12, 2015, counsel for Appellees submitted

a Rule 28(j) letter informing the court of our decision in

Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d

652 (Fed. Cir. 2015), arguing that Achates mandates

dismissal of the appeal for lack of appellate jurisdiction.

Rule 28(j) Citation of Suppl. Authority, No. 15-1242 (Fed.

Cir. Oct. 12, 2015), ECF No. 64. In light of Achates, this

panel subsequently waived oral argument, and, on No-

vember 12, 2015, issued an order dismissing CTC’s appeal

for lack of jurisdiction. Click-to-Call Techs., LP v. Oracle

Corp., 622 F. App’x 907 (Fed. Cir. 2015) (per curiam)

(Click-to-Call I).

CTC petitioned for writ of certiorari, and, on June 27,

2016, the Supreme Court granted the petition, vacated

this court’s judgment in Click-to-Call I, and remanded for

further consideration in light of its opinion in Cuozzo.

Click-to-Call Techs., LP v. Oracle Corp., No. 15-1014

(June 27, 2016). We directed the parties to file supple-

mental briefs and the parties complied with our directive.

On September 21, 2016, counsel for Appellees filed a

second letter regarding supplemental authority, this time

informing the court of our decision in Wi-Fi One, LLC v.

Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016). Rule

28(j) Citation of Suppl. Authority, No. 15-1242 (Fed. Cir.

Sept. 21, 2016), ECF No. 83. In this letter, Appellees

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 9

argued that, because Wi-Fi One confirmed that Achates

remained good law, CTC’s appeal should again be dis-

missed for lack of appellate jurisdiction. We agreed with

Appellees that we were bound by our precedents in Wi-Fi

One and Achates, and on November 17, 2016, dismissed

CTC’s appeal for a second time. Click-to-Call Techs., LP

v. Oracle Corp., No. 15-1242, 2016 WL 6803054 (Fed. Cir.

Nov. 17, 2016) (Click-to-Call II).

On December 5, 2016, CTC filed a petition for en banc

rehearing, principally arguing that Achates and Wi-Fi

One should be overruled. Pet. for Reh’g En Banc, No. 15-

1242 (Fed. Cir. Dec. 5, 2016), ECF No. 91. Less than one

month later, CTC’s wish was partially granted when this

court agreed to consider en banc whether it should over-

rule Achates and hold that judicial review is available for

a patent owner to challenge the Director’s determination

that the petitioner satisfied the timeliness requirement of

35 U.S.C. § 315(b). Order, Wi-Fi One, LLC v. Broadcom

Corp., Nos. 2015-1944, -1945, -1946 (Fed. Cir. Jan. 4,

2017) (en banc), ECF No. 67. The panel in this case

subsequently held CTC’s petition for rehearing in abey-

ance pending the outcome of Wi-Fi One.

On January 8, 2018, we issued our en banc decision in

Wi-Fi One, expressly overruling Achates and holding that

time-bar determinations under § 315(b) are appealable.

878 F.3d at 1367. We subsequently granted CTC’s peti-

tion for rehearing en banc, which we construed as a

petition for panel rehearing, and authorized supplemental

briefing regarding the merits of the Board’s compliance

with § 315(b). Order, No. 15-1242 (Fed. Cir. Jan. 19,

2018), ECF No. 99. CTC, Petitioners, and the Director, as

Intervenor, all filed supplemental briefs in February and

March of this year.

We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

10 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

II. DISCUSSION

A. Section 315(b) and Voluntary Dismissals

Without Prejudice

The principal question on appeal is whether the Board

erred in interpreting the phrase “served with a complaint

alleging infringement of [a] patent” recited in § 315(b)

such that the voluntary dismissal without prejudice of the

civil action in which the complaint was served “does not

trigger” the bar. Final Written Decision, slip op. at 12.

We hold that it did. 3

1. Legal Standards

We review the Board’s statutory interpretation pur-

suant to Chevron, U.S.A., Inc. v. Natural Resources De-

fense Council, Inc., 467 U.S. 837 (1984), Auer v. Robbins,

519 U.S. 452 (1997), and United States v. Mead Corp., 533

U.S. 218, 229–30 (2001). Chevron requires that a court

reviewing an agency’s construction of a statute it admin-

isters first discern “whether Congress has directly spoken

to the precise question at issue.” 467 U.S. at 842. If the

answer is yes, the inquiry ends, and the reviewing court

must give effect to Congress’s unambiguous intent. Id. at

842–43. If the answer is no, the court must consider

“whether the agency’s answer [to the precise question at

3 The en banc court formed of PROST, Chief Judge,

NEWMAN, LOURIE, DYK, MOORE, O’MALLEY, REYNA,

WALLACH, TARANTO, CHEN, HUGHES, and STOLL, Circuit

Judges, considered whether 35 U.S.C. § 315(b)’s time bar

applies to bar institution when an IPR petitioner was

served with a complaint for patent infringement more

than one year before filing its petition, but the district

court action in which the petitioner was so served was

voluntarily dismissed without prejudice. The en banc

court holds that § 315(b)’s time bar applies in such a

scenario.

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 11

issue] is based on a permissible construction of the stat-

ute.” Id. at 843. The agency’s “interpretation governs in

the absence of unambiguous statutory language to the

contrary or unreasonable resolution of language that is

ambiguous.” United States v. Eurodif S.A., 555 U.S. 305,

316 (2009) (citing Mead, 533 U.S. at 229–30).

When a statute expressly grants an agency rulemak-

ing authority and does not “unambiguously direct[ ]” the

agency to adopt a particular rule, the agency may “enact

rules that are reasonable in light of the text, nature, and

purpose of the statute.” Cuozzo, 136 S. Ct. at 2142 (citing

Mead, 533 U.S. at 229, and Chevron, 467 U.S. at 843).

When the Director does adopt rules, “[w]e accept the

[Director’s] interpretation of Patent and Trademark Office

regulations unless that interpretation is plainly erroneous

or inconsistent with the regulation.” In re Sullivan, 362

F.3d 1324, 1326 (Fed. Cir. 2004) (quoting Eli Lilly Co. v.

Bd. of Regents of the Univ. of Wash., 334 F.3d 1264, 1266

(Fed. Cir. 2003) (citing Auer, 519 U.S. at 461–62, and

Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414

(1945))) (internal quotations omitted).

Where an agency instead engages in “interpretive,”

rather than “formal,” rulemaking, a lower level of defer-

ence might apply. See Mead, 533 U.S. at 230–31 (describ-

ing notice-and-comment as “significant . . . in pointing to

Chevron authority”); Reno v. Koray, 515 U.S. 50, 61 (1995)

(according “some deference” to an interpretive rule that

“do[es] not require notice and comment” (citations omit-

ted)). The Supreme Court has explained that “[t]he fair

measure of deference to an agency administering its own

statute has been understood to vary with circumstances,

and courts have looked to the degree of the agency’s care,

its consistency, formality, and relative expertness, and to

the persuasiveness of the agency’s position.” Mead, 553

U.S. at 228 (footnotes omitted) (citing Skidmore v. Swift

& Co., 323 U.S. 134, 139–40 (1944)).

12 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

2. Chevron Step One

We begin our analysis of the Board’s interpretation of

§ 315(b) by construing the provision. “As in any case of

statutory construction, our analysis begins with the

language of the statute.” Hughes Aircraft Co. v. Jacobson,

525 U.S. 432, 438 (1999) (internal quotation marks and

citation omitted). “The first step ‘is to determine whether

the language at issue has a plain and unambiguous

meaning with regard to the particular dispute in the

case.’” Barnhart v. Sigmon Coal Co., Inc., 534 U.S. 438,

450 (2002) (quoting Robinson v. Shell Oil Co., 519 U.S.

337, 340 (1997)). In doing so, we “must read the words ‘in

their context and with a view to their place in the overall

statutory scheme.’” King v. Burwell, –– U.S. ––, 135 S.

Ct. 2480, 2489 (2015) (quoting FDA v. Brown & William-

son Tobacco Corp., 529 U.S. 120, 133 (2000)). This is

because statutory “[a]mbiguity is a creature not of defini-

tional possibilities but of statutory context.” Brown v.

Gardner, 513 U.S. 115, 118 (1994). Importantly, we may

not conclude that a statutory provision is ambiguous until

we conclude that resort to all standard forms of statutory

interpretation are incapable of resolving any apparent

ambiguity which might appear on the face of the statute.

See Chevron, 467 U.S. at 843 n.9. And, in discerning

whether a statute is ambiguous, we must take care not to

weigh competing policy goals, for “[i]t is Congress’s job to

enact policy and it is th[e] [c]ourt’s job to follow the policy

Congress has prescribed.” SAS Inst., Inc. v. Iancu, 138 S.

Ct. 1348, 1358 (2018).

a. Plain and Unambiguous Language

We “[s]tart where the statute does.” SAS, 138 S. Ct.

at 1355. Section 315(b), titled “Patent Owner’s Action,”

provides that an IPR “may not be instituted if the petition

requesting the proceeding is filed more than 1 year after

the date on which the petitioner, real party in interest, or

privy of the petitioner is served with a complaint alleging

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 13

infringement of the patent.” 35 U.S.C. § 315(b) (emphasis

added). The statute does not contain any exceptions or

exemptions for complaints served in civil actions that are

subsequently dismissed, with or without prejudice. Nor

does it contain any indication that the application of

§ 315(b) is subject to any subsequent act or ruling. In-

stead, the provision unambiguously precludes the Direc-

tor from instituting an IPR if the petition seeking

institution is filed more than one year after the petitioner,

real party in interest, or privy of the petitioner “is served

with a complaint” alleging patent infringement. Simply

put, § 315(b)’s time bar is implicated once a party receives

notice through official delivery of a complaint in a civil

action, irrespective of subsequent events.

The “ordinary, contemporary, common meaning[s]” of

the operative terms “served” and “complaint” support the

understanding that it is wholly irrelevant to the § 315(b)

inquiry whether the civil action in which the complaint

was filed is later voluntarily dismissed without prejudice.

Black’s Law Dictionary defines “serve” as “[t]o make legal

delivery of (a notice or process)” or “[t]o present (a person)

with a notice or process as required by law,” and defines

“service” as “[t]he formal delivery of a writ, summons, or

other legal process[.]” Black’s Law Dictionary 1491 (9th

ed. 2009). It defines “complaint” as “[t]he initial pleading

that starts a civil action and states the basis for the

court’s jurisdiction, the basis for the plaintiff’s claim, and

the demand for relief.” Id. at 323. These definitions

confirm that the plain meaning of the phrase “served with

a complaint” is “presented with a complaint” or “delivered

a complaint” in a manner prescribed by law. Indeed, at

least one Board decision has interpreted the phrase

“served with a complaint” in precisely this manner: “the

legally-charged text ‘served with a complaint’ is used

ordinarily in connection with the official delivery of a

complaint in a civil action.” Amkor Tech., Inc. v. Tessera,

14 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

Inc., No. IPR2013-00242, slip op. at 9 (P.T.A.B. Jan. 31,

2014), Paper No. 98.

This reading of § 315(b) is confirmed by our en banc

decision in Wi-Fi One, in which we held that the provision

sets forth a “condition precedent to the Director’s authori-

ty to act,” based on the “timely filing of a petition.” 878

F.3d at 1374. Indeed, we observed that, “if a petition is

not filed within a year after a real party in interest, or

privy of the petitioner is served with a complaint, it is

time-barred by § 315(b), and the petition cannot be recti-

fied and in no event can IPR be instituted.” Id. at 1374

n.9 (emphases added). This is so because § 315(b)’s time

bar concerns “real-world facts that limit the agency’s

authority to act under the IPR scheme,” reflecting Con-

gress’s “balancing [of] various public interests.” Id. at

1374; see id. at 1377 (O’Malley, J., concurring) (explaining

that “§ 315(b) codifies one of the ‘important procedural

rights’ that Congress chose to afford patent owners in the

IPR context” (quoting Lindahl v. Office of Pers. Mgmt.,

470 U.S. 768, 791 (1985))). It is impossible to square Wi-

Fi One’s “cannot be rectified” and “in no event” language

with the possibility that subsequent events in the civil

action might operate to “nullify” service of the complaint

for the purpose of § 315(b)’s time bar. 4

4 Although the stipulations of dismissal in this case

were jointly entered by the predecessors of both CTC and

Ingenio, we acknowledge that plaintiffs in civil suits can

seek dismissal without prejudice pursuant to Rule

41(a)(1) of the Federal Rules of Civil Procedure in certain

circumstances without a court order and without any

involvement by the defendant. This reality does not alter

our conclusion that the subsequent dismissal of a civil

action is irrelevant to whether a petitioner, real party in

interest, or privy of the petitioner was previously “served

with a complaint” within the meaning of § 315(b). To the

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 15

Moreover, adopting the Board’s preferred construction

of the phrase “served with a complaint” in § 315(b) “would

impose additional conditions not present in the statute’s

text.” Return Mail, Inc. v. U.S. Postal Serv., 868 F.3d

1350, 1363 (Fed. Cir. 2017) (citing Norfolk Dredging Co. v.

United States, 375 F.3d 1106, 1111 (Fed. Cir. 2004), for its

holding that courts must avoid “add[ing] conditions” to

the applicability of a statute that do not appear in the

provision’s text). Congress specifically addressed the

effect of a dismissal of an IPR petitioner’s district court

action in § 315(a)(2), but did not include any similar

language in § 315(b). Congress also demonstrated that it

knew how to provide an exception to the time bar by

including a second sentence in the provision: “The time

limitation set forth in the preceding sentence shall not

apply to a request for joinder under subsection (c).” 35

U.S.C. § 315(b). Similarly, Congress could have chosen to

include a variation of the phrase “unless the action in

which the complaint was served was later dismissed

without prejudice,” but it did not do so. We reject the

Board’s effort to graft this additional language into

§ 315(b). Cf. Return Mail, 868 F.3d at 1363 (rejecting

appellant’s argument, in part, because “Congress could

have easily specified the phrase ‘sued for infringement’ to

require being sued for infringement under 35 U.S.C. § 271

or otherwise excluded [28 U.S.C.] § 1498 suits from the

definition of ‘sued for infringement,’ but it did not do so”).

b. Legislative History

The legislative history of § 315(b) further supports the

understanding that its time bar concerns only the date on

which the complaint was formally served. For example,

extent the parties debate whether the Board’s interpreta-

tion of § 315(b) results in good policy, “who should win

that debate isn’t our call to make.” SAS, 138 S. Ct. at

1358.

16 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

during the March 2011 Senate debates, Senator Kyl made

clear that, under the version of § 315(b) then being con-

sidered, “if a party has been sued for infringement and

wants to seek inter partes review, he must do so within 6

months of when he was served with the infringement

complaint.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011)

(statement of Sen. Kyl) (emphases added). This unequiv-

ocal reference to the date on which an accused infringer

was served suggests that Congress did not contemplate

subsequent events “nullifying” § 315(b)’s time bar.

The legislative history also clarifies that Congress

chose the date of service, as opposed to some other event,

as the trigger for § 315(b)’s time bar because service of a

complaint is the seminal notice-conferring event in a

district court action. As the Supreme Court has ex-

plained, “the core function of service is to supply notice of

the pendency of a legal action, in a manner and at a time

that affords the defendant a fair opportunity to answer

the complaint and present defenses and objections.”

Henderson v. United States, 517 U.S. 654, 672 (1996)

(emphasis added). During the September 2011 Senate

debates, Senator Kyl offered the following justification for

extending the previously contemplated six-month time

bar to one year. He observed that companies, in particu-

lar those in the high-technology sector, “are often sued by

[patentees] asserting multiple patents with large num-

bers of vague claims, making it difficult to determine in

the first few months of the litigation which claims will be

relevant and how those claims are alleged to read on the

defendant’s products.” 157 Cong. Rec. S5429 (daily ed.

Sept. 8, 2011) (statement of Sen. Kyl). Recognizing that

“[c]urrent law imposes no deadline on seeking inter partes

reexamination,” he reasoned that, “in light of the present

bill’s enhanced estoppels, it is important that the section

315(b) deadline afford defendants a reasonable opportuni-

ty to identify and understand the patent claims that are

relevant to the litigation.” Id. (emphasis added). Con-

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 17

gress, in “balancing various public interests,” decided to

use the “real-world fact[]” of when a petitioner, real party

in interest, or privy of the petitioner was “served with a

complaint” to trigger § 315(b). Wi-Fi One, 878 F.3d at

1374.

c. Conclusion Regarding Chevron Step One

“Because a statute’s text is Congress’s final expression

of its intent, if the text answers the question, that is the

end of the matter.” Timex V.I., Inc. v. United States, 157

F.3d 879, 882 (Fed. Cir. 1998) (citations omitted); see also

Cuozzo, 136 S. Ct. at 2142 (“Where a statute is clear, the

agency must follow the statute.”). Here, the text of

§ 315(b) clearly and unmistakably considers only the date

on which the petitioner, its privy, or a real party in inter-

est was properly served with a complaint. Because “the

statutory language is unambiguous and ‘the statutory

scheme is coherent and consistent,’” our inquiry ceases

and we need not proceed to Chevron’s second step. Barn-

hart, 534 U.S. at 450 (quoting Robinson, 519 U.S. at 340).

Simply put, there is no gap to fill or ambiguity to resolve:

“[w]here a statute’s language carries a plain meaning, the

duty of an administrative agency is to follow its com-

mands as written, not to supplant those commands with

others it may prefer.” SAS, 138 S. Ct. at 1355 (citing Soc.

Sec. Bd. v. Nierotko, 327 U.S. 358, 369 (1946)).

2. The Board’s Contrary Reasoning Is Unpersuasive

Notwithstanding the absence of any facial ambiguity

in the phrase “served with a complaint,” the Board con-

cluded that CTC “has not established that service of the

complaint in the infringement suit brought by Inforocket

against Keen bars Ingenio, LLC from pursuing an inter

partes review for the ’836 patent.” JA. 288. To support

this conclusion, the Board wrote that the “Federal Circuit

consistently has interpreted the effect of such dismissals

as leaving the parties as though the action had never

been brought,” and cited this court’s decisions in Graves,

18 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

294 F.3d at 1356, and Bonneville, 165 F.3d at 1364, and a

section of Wright and Miller’s Federal Practice and Proce-

dure treatise. Id. The Board concluded that,

“[a]ccordingly, the dismissal of the infringement suit

brought by Inforocket against Keen—now Ingenio, LLC—

nullifies the effect of the service of the complaint and, as a

consequence, does not bar Ingenio, LLC or any of the

other Petitioners from pursuing an inter partes review of

the ’836 patent.” Id. (emphasis added).

The Board misunderstood that the text of § 315(b) is

agnostic as to the “effect” of the service—i.e., what events

transpired after the defendant was served. The provision

only probes whether the petitioner, real party in interest,

or privy of the petitioner was served with a complaint

alleging patent infringement more than one year before

the IPR petition was filed. We reject the Board’s interpre-

tation of § 315(b) for this reason alone.

Even if the provision could fairly be read to consider

the “effect” of service—which it cannot—the Board’s

reliance on the cited authorities was erroneous. 5 We

interpret the Board’s reasoning as presupposing that the

phrase “served with a complaint” is a legal term of art

with some latent ambiguity, necessitating the reliance on

additional interpretive aids. Assuming arguendo that the

phrase is ambiguous, none of the authorities on which the

Board relied help resolve this ambiguity because they

each concern fundamentally different contexts, and con-

sequently shed no light on “whether service of a complaint

can be nullified.” Shaw Indus. Grp., Inc. v. Automated

Creel Sys., Inc., 817 F.3d 1293, 1301 (Fed. Cir. 2016)

(recognizing that “we have held in other cases that dis-

5 We ignore for the purpose of this appeal whether

the Board improperly placed the burden of demonstrating

that the IPR petition was time-barred on CTC, the patent

owner.

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 19

missals without prejudice leave the parties as though the

action had never been brought,” but questioning “whether

service of a complaint can be nullified”).

Both Bonneville and Graves concern the dismissal of

an appeal in a first proceeding and the extent to which

that dismissal impacts the appellant’s ability to initiate a

later proceeding. In the former, Bonneville, after receiv-

ing an adverse decision from a contracting officer, filed a

notice of appeal with the General Services Administration

Board of Contract Appeals, but thereafter “withdr[e]w” its

notice of appeal pursuant to the Board’s rules to “pursue

its appeal in the U.S. Claims Court.” Bonneville, 165 F.3d

at 1362. Before the Board actually dismissed the appeal

without prejudice—under the condition that the dismissal

would transform into one with prejudice unless Bonne-

ville reinstated its appeal in three years—Bonneville

brought suit in the Claims Court. Id. The Claims Court,

however, dismissed the suit, holding that Bonneville’s

filing of the appeal to the Board constituted an election of

remedies that barred Bonneville from subsequently

invoking the court’s jurisdiction. Id.

We affirmed the Claims Court’s dismissal, id., and ten

days later, Bonneville sought to reinstate its appeal to the

Board, arguing that it was complying with the three-year

deadline set forth in the Board’s dismissal order, id. at

1363. But the Board “applied the same principle that the

federal courts had applied in construing the similar

provision governing voluntary dismissals without preju-

dice in Federal Rule of Civil Procedure 41(a), namely, that

an appeal so dismissed ‘leaves the situation as if the suit

had never been brought.’” Id. The Board therefore con-

cluded that,

because Bonneville voluntarily caused its appeal

to be dismissed without prejudice in order to pur-

sue the appeal in another forum, Bonneville is

placed in the same position as if the first appeal

20 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

had never been filed. The second filing does not

relate back to the date of the first filing. Moreo-

ver, as the second complaint filed on December 29,

1994 is a “new appeal” filed after the expiration of

the CDA ninety-day time limit, it is untimely. We

lack jurisdiction to hear this appeal.

Id.

We affirmed the Board’s dismissal, finding no plain

error in the Board’s decision to treat Bonneville’s dismis-

sal without prejudice the same way that federal courts

would have treated it under Rule 41(a). Id. at 1364. We

then disagreed with Bonneville’s criticism of the Board’s

rule as a “legal fiction,” writing that its rule “merely

states the consequence of a voluntary dismissal without

prejudice, namely, that the appellant cannot thereafter

resurrect the appeal after the statute of limitations on the

cause of action has run.” Id. (emphasis added).

Graves likewise concerns an appellant’s effort to seek

relief a second time beyond a limitations period. After

Graves received an adverse decision from the Board of

Veterans’ Appeals, he, proceeding pro se, timely appealed

to the U.S. Court of Appeals for Veterans Claims (“Veter-

ans Court”). 294 F.3d at 1353. He thereafter retained

counsel, who filed in the Veterans Court a document

requesting dismissal without prejudice, but neither men-

tioning any rules of the Veterans Court nor indicating

that Graves intended to seek reconsideration of the

Board’s decision. Id. The Veterans Court thereafter

dismissed the appeal pursuant to Rule 42 of its Rules of

Practice and Procedure. Id.

Graves then asked the Board to reconsider its initial

decision, and after the Board denied this request, Graves

appealed both the initial decision and the denial of his

request for reconsideration to the Veterans Court. Id.

The Veterans Court dismissed this appeal for lack of

jurisdiction on the ground that it was untimely, pointing

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 21

out that, pursuant to 38 U.S.C. § 7266(a), Graves was

required to file his notice of appeal with the Veterans

Court within 120 days of the date the Board mailed its

initial decision to him. Id. Citing an earlier decision, the

Veterans Court observed that, if Graves had filed a mo-

tion for reconsideration with the Board within the 120-

day judicial appeal period, the finality of the initial Board

decision “would have been abated” and a new 120-day

period would have begun to run on the date that the

Board mailed him a denial of his motion for reconsidera-

tion. Id.

We affirmed, writing that “[t]he most fundamental

problem” facing Graves “is the fact that, as a matter of

law, once his appeal was dismissed—for whatever pur-

pose and whether with or without prejudice—it was as if

the appeal had never been filed.” Id. at 1355–56. We

noted that, in Bonneville, “the nullifying effect of a volun-

tary dismissal in accordance with Fed. R. Civ. P. 41(a)(1)

was applied in the context of a General Services Admin-

istration Board of Contract Appeals dismissal,” and

concluded that “the rule is equally applicable to voluntary

dismissals under Rule 42 of the Veterans Court.” Id. at

1356. Thus, once Graves dismissed his initial appeal, “the

Veterans Court no longer had jurisdiction over the action”

and he “was barred from appealing” the Board’s decision

because “he was in the same situation that he would have

been in if he had never filed a notice of appeal.” Id.

These two cases are inapplicable to the issue present-

ed in this appeal. Both concern whether an appellant’s

filing of a notice of appeal and subsequent dismissal of

that appeal “tolls” the jurisdictional deadline to appeal

from the decision below. The cases, relying on the princi-

ple that “[t]he effect of a voluntary dismissal without

prejudice pursuant to Rule 41(a) ‘is to render the proceed-

ings a nullity and leave the parties as if the action had

never been brought,’” Bonneville, 165 F.3d at 1364 (em-

phasis added) (quoting Williams v. Clarke, 82 F.3d 270,

22 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

273 (8th Cir. 1996)), answer this question in the negative.

More broadly, the background legal principle in these

cases is that a party’s voluntary dismissal of its action or

appeal will not toll a statute of limitations, and, as a

result, a subsequently filed action or appeal must still be

brought within the original limitations period.

Here, by contrast, the appropriate question is whether

the voluntary, without prejudice dismissal of a civil action

in which a complaint had been served nullifies an admin-

istrative time bar that is triggered by service of that

complaint. It does not. Yet the Board, without explana-

tion, extended the background principle of Graves and

Bonneville to conclude that such a dismissal “nullifies the

effect of the service of the complaint.” It then relied on

this erroneous conclusion to “un-ring” § 315(b)’s time bar.

In effect, the Board relied on cases holding that the volun-

tary dismissal of an action or appeal does not toll a stat-

ute of limitations to conclude that the voluntary dismissal

without prejudice of a civil action does indefinitely toll

§ 315(b) and permitted an otherwise untimely IPR to

proceed, turning Bonneville and Graves on their head.

These cases do not delve into the meaning of the

terms “serve” or “complaint,” nor do they hold that the

voluntary, without prejudice dismissal of a civil action

transforms the ordinary meaning of the phrase “served

with a complaint” into something else. Although we

“presume that ‘Congress intended to retain the substance

of the common law’” when “a statute covers an issue

previously governed by the common law,” Kirtsaeng v.

John Wiley & Sons, Inc., 568 U.S. 519, 538 (2013) (quot-

ing Samantar v. Yousuf, 560 U.S. 305, 320, n.13 (2010)),

where the statutory scheme is clear, we are not to “invent

an atextual explanation for Congress’s drafting choices,”

SAS, 138 S. Ct. at 1357.

Where, moreover, the proposed atextual explanation

is the alleged existence of a “background legal principle,”

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 23

that principle must both be firmly established and une-

quivocal before it can justify ignoring the plain text of the

statute. The background legal principle on which Peti-

tioners and the Director rely—that a “dismissal without

prejudice leaves the parties in the same legal position as

if the underlying complaint had never been filed,” for all

purposes, Appellees Suppl. Br. 3—is anything but une-

quivocal. A voluntary dismissal without prejudice only

leaves the dismissed action without legal effect for some

purposes; for many other purposes, the dismissed action

continues to have legal effect. Indeed, a voluntary dis-

missal without prejudice (1) may give rise to costs and

fees under Rule 11, see Wright & Miller, Federal Prac. &

Proc. Civ. §§ 1336, 2367; (2) forbids the filing of a subse-

quent action “based on or including the same claim” under

Rule 41(a)(1)(B); and (3) may establish the necessary case

or controversy for a later declaratory judgment action, see

TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d

1295, 1300 (Fed. Cir. 2016) (“After 3M voluntarily dis-

missed [its] suit due to an apparent personal jurisdiction

issue, TransWeb filed suit in New Jersey for declaratory

judgment.”). The Director itself acknowledges that the

filing of a patent infringement complaint, even if later

voluntarily dismissed, can play a role in proving the

defendant’s knowledge of the patent if charged with

willful infringement. Intervenor’s Second Suppl. Br. 8.

And counsel for Petitioners admitted at oral argument

that § 315(b) “appears to be unique relative to the other

cases cited in that it involves the act of service triggering

a limitations period,” suggesting that there is no pertinent

“background legal principle” that might alter our view of

the plain and ordinary meaning of the phrase “served

with a complaint.” Oral Arg. at 22:13–22:29, available at

http://oralarguments.cafc.uscourts.gov/default.aspx

?fl=2015-1242.mp3. 6

6 The background legal principle on which the Di-

24 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

For all of these reasons, we conclude that a defendant

served with a complaint as part of a civil action that is

voluntarily dismissed without prejudice remains “served”

with the “complaint.” This remains true even if that

action becomes a “nullity” for other purposes and even if

such service becomes legally irrelevant in a subsequent

court action.

B. Petitioners’ Alternative Arguments

Petitioners also argue that, even if the Board erred in

concluding that the voluntary dismissal of the district

court action rendered § 315(b) inapplicable because the

dismissal “nullifie[d] the effect of the service,” the institu-

tion of the IPR proceeding was nevertheless proper for

two independent reasons. Although CTC initially posited

that subsidiary factual questions precluded us from

deciding in the first instance the merits of Petitioners’

alternative arguments, Reply Br. 24, the parties (but not

the Director) now agree that no further fact-finding is

required. We therefore address these arguments in turn.

See Killip v. Office of Pers. Mgmt., 991 F.2d 1564, 1568–69

(Fed. Cir. 1993) (recognizing, in the context of a Merit

Systems Protection Board case, that we may “affirm the

Board on grounds other than those relied upon in render-

ing its decision, when upholding the Board’s decision does

not depend upon making a determination of fact not

previously made by the Board”).

rector and Petitioners rely cannot be as absolute as they

contend. We have little doubt that a contract clearly and

unambiguously providing for a payment to be due upon

service of a complaint would render such payment due,

and remaining due, upon service of a complaint that is

later dismissed without prejudice. A statutory bar that is

clearly and unambiguously triggered by service of a

complaint, such as § 315(b), is to the same effect.

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 25

1. The Impact of Ex Parte Reexamination

Petitioners first contend that, because the claims of

the ’836 patent were materially changed during a subse-

quent ex parte reexamination, neither they nor any other

entity was served with a complaint alleging infringement

of this patent more than one year before the IPR petition

was filed. See Appellees Br. 8, 19–21. In particular, they

claim that, “[b]ecause each claim of the reexamined

patent substantively differs from the claims of the origi-

nal patent, the reexamined ’836 patent should be treated

as a new patent for purposes of § 315(b).” Id. at 21.

Petitioners are mistaken. “Unlike reissue, reexami-

nation does not result in the surrender of the original

patent and the issuance of a new patent.” Aspex Eyewear,

Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1341–42

(Fed. Cir. 2012). Indeed, the relevant provision provides

that a reexamination certificate “incorporat[es] in the

patent any proposed amended or new claim determined to

be patentable.” 35 U.S.C. § 307(a) (emphasis added).

Petitioners’ reliance on 35 U.S.C. § 307(b) is unavailing.

That provision simply means that any amended or new

claim incorporated in a reexamined patent has the same

effect as that specified in 35 U.S.C. § 252 for a reissued

patent only with respect to so-called “intervening rights.”

In other words, § 307(b) statutorily protects the ability of

a “person or that person’s successors in business” to

continue to use, offer for sale, or sell anything protected

by the amended or new claims, provided such actions do

not infringe a valid claim of the reexamined patent that

was in the original patent. Compare 35 U.S.C. § 307(b),

with 35 U.S.C. § 252. Congress could have included in

any of 35 U.S.C. §§ 252, 307(b), or 315(b) language regard-

ing the effect of reexamination on the deadline to file an

IPR—it chose not to do so.

Petitioners’ emphasis on alleged differences in claim

scope misunderstands that § 315(b) does not speak in

26 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

terms of claims. Instead, the provision asks on what date

the petitioner, real party in interest, or privy of the peti-

tioner “is served with a complaint alleging infringement of

the patent,” making clear that the timeliness analysis is to

be made with reference to “the patent.” The Director

agrees with this conclusion. See Intervenor Second Suppl.

Br. 10 n.3.

Even if we were to hold that § 315(b) is ambiguous

with respect to whether the term “the patent” includes

reexamined patents having amended or new claims of

“substantively differ[ent]” scope than the original claims,

we would still reject Petitioners’ argument that the time

bar does not apply here. We have held that, “in the

absence of a clear showing that such a material difference

in fact exists in a disputed patentable reexamination

claim, it can be assumed that the reexamined claims will

be a subset of the original claims and that no new cause of

action will be created.” Senju Pharm. Co., Ltd. v. Apotex

Inc., 746 F.3d 1344, 1353 (Fed. Cir. 2014). We reached

this holding after asking whether “it is possible that a

reexamination could ever result in the issuance of new

patent claims that were so materially different from the

original patent claims as to create a new cause of action,

but at the same time were sufficiently narrow so as not to

violate the rule against reexamined claims being broader

than the original claims.” Id. Petitioners did not make

any showing in the IPR proceeding that the amended or

new claims of the ’836 patent are “materially different”

than the original claims, and we reject their unsupported

effort to do so for the first time on appeal.

For these reasons, we reject Petitioners’ effort to deem

the reexamined ’836 patent a “new patent” for § 315(b)

purposes.

2. The Relevance of “Non-Barred” Petitioners

Petitioners also submit that, even if § 315(b)’s time

bar applies to YP Interactive, it would not apply to Yel-

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 27

lowPages.com, Oracle Corporation, or Oracle OTC Subsid-

iary LLC. According to Petitioners, because YellowPag-

es.com was not in privity with YP Interactive or its

predecessors “before at least 2008,” YellowPages.com

never had any opportunity, as a privy or otherwise, to

participate in the Inforocket Action or Keen Action, which

were voluntarily dismissed years earlier. Appellees Br.

24. They also submit that the Oracle entities were not

parties, real parties in interest, or privies of Ingenio with

respect to these earlier proceedings. In Petitioners’ view,

these arguments are relevant because, if these entities

had filed separate petitions, those petitions would not

have been time barred under § 315(b). Moreover, they

submit that, had YP Interactive filed a separate petition,

the Director could have joined its petition with the hypo-

thetical non-barred petitions pursuant to 35 U.S.C.

§ 315(c), rendering any error in the Board’s § 315(b)

determination vis-à-vis YP Interactive harmless.

We reject these efforts to separate YP Interactive

from the other Petitioners to save the petition as to the

latter. We need not scrutinize the legal relationships

between YellowPages.com, Oracle Corporation, and

Oracle OTC Subsidiary LLC, on the one hand, and Ingen-

io/YP Interactive, on the other, to address Petitioners’

arguments. These four entities declared themselves as

“the Petitioner” in their sole IPR petition, and certified

that Ingenio (now YP Interactive) is a “real party in

interest.” J.A. 345. In these circumstances, under cur-

rent law, Petitioners are properly treated as an undiffer-

entiated unit that filed an untimely petition.

Section 315(b) and the implementing regulation both

treat a petition as if there is a single petitioner for pur-

poses of the one-year rule. Section 315(b) bars institution

of an IPR where “the petition requesting the proceeding is

filed more than 1 year after the date on which the peti-

tioner, real party in interest, or privy of the petitioner is

served with a complaint alleging infringement of the

28 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

patent.” 35 U.S.C. § 315(b) (emphases added). The

governing regulation, which largely parrots § 315(b), is to

the same effect:

[a] person who is not the owner of a patent may

file with the [Patent & Trademark Office] a peti-

tion to institute an [IPR] of the patent unless . . .

[t]he petition requesting the proceeding is filed

more than one year after the date on which the

petitioner, the petitioner’s real party-in-interest,

or a privy of the petitioner is served with a com-

plaint alleging infringement of the patent.

37 C.F.R. § 42.101(b) (emphases added). Both the statute

and the regulation ask only two questions: (1) when was

“the petition” filed; and (2) when was “the petitioner,” the

petitioner’s real party in interest, or a privy of the peti-

tioner served with a complaint? They do not differentiate

between multiple petitioners.

We read section 315(b), as implemented by the exist-

ing regulation, to apply petition-by-petition, not petition-

er-by-petitioner, with the collection of petitioners on a

single petition treated as a unit indistinguishable from

each member of that collection. This reading of the statu-

tory and regulatory reference to the singular “the peti-

tioner” for the one-year time bar is supported by the fact

that, in the same statutory scheme, Congress expressly

recognized the possibility of multiple petitioners and

permitted separate treatment of them for different pur-

poses. See, e.g., 35 U.S.C. § 317(a) (addressing continua-

tion of IPR as to some petitioners after dismissal of

others). In concluding that this is the best reading of the

statute and its parroting regulation, we are not deciding

whether the statute is ambiguous and could permissibly

be implemented through a different regulation providing

for separate treatment of multiple petitioners in assessing

timeliness under the one-year time bar—a distinct ques-

tion that would arise if the Director newly adopted such a

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 29

regulation. See Nat’l Cable & Telecomms. Ass’n v. Brand

X Internet Servs., 545 U.S. 967, 982–85 (2005) (holding

that, where a court determines the “best reading” of a

provision without finding an “unambiguous” meaning, the

Chevron step one question is not answered, and an agency

having Chevron authority may adopt a different statutory

position and have it tested under the Chevron frame-

work). 7

Under the unitary-entity interpretation of section

315(b) and its implementing regulation, the petition at

issue here was untimely. “The petitioner” (all four peti-

tioners considered collectively) filed the single petition

more than one year after YP Interactive (operating under

the name Keen), which is itself both “the petitioner” and a

real party in interest, was served with a complaint alleg-

ing infringement of the ’836 patent. The Director was

therefore barred from instituting this IPR based on this

petition.

Because this IPR was not instituted properly, the fi-

nal written decision was entered contrary to a statutory

command and must be set aside. Petitioners cite nothing

7 Were the Director or Board merely to interpret

(rather than change) the current regulation to allow

separate treatment of co-petitioners for § 315(b) purposes,

that interpretation would not be owed deference in light

of our interpretation of the existing regulation, given the

statute-parroting nature of this regulation. See Gonzales

v. Oregon, 546 U.S. 243, 257 (2006) (ruling that “the

existence of a parroting regulation does not change the

fact that the question here is not the meaning of the

regulation but the meaning of the statute,” and “[a]n

agency does not acquire special authority to interpret its

own words when, instead of using its expertise and expe-

rience to formulate a regulation, it has elected merely to

paraphrase the statutory language”).

30 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

to support a conclusion that the error in instituting on

this petition could be deemed harmless just because a

different petition might have been filed that would have

permitted institution of a different IPR to review the

same patent claims. Indeed, that circumstance would

often be the case, since any “person who is not the owner

of a patent” may file a petition for an IPR. 35 U.S.C.

§ 311(a). Accordingly, what matters here is whether this

petition provided a lawful basis upon which to institute

this IPR. Cf. SAS, 138 S. Ct. at 1358 n.* (explaining that

the possible existence of a different path to the same

agency result—there, partial institution—did not validate

the path actually followed). Section 315(b), as imple-

mented by the current regulation, is best understood to

answer that question no.

Petitioners’ additional reliance on §§ 315(c) and 317(a)

in an effort to save this petition as to some petitioners

does not persuade. Petitioners’ § 315(c) theory would

seem to be that the petition may be viewed as having been

filed solely by the Oracle and YellowPages.com petitioners

and merely joined by YP Interactive, so that the timeli-

ness determination could disregard YP Interactive.

Petitioners’ § 317(a) theory would seem to be that YP

Interactive might be dropped from the IPR, leaving only

the other petitioners, as to which the Board may continue.

As already noted, however, the availability of a path not

taken does not validate the path actually taken. SAS, 138

S. Ct. at 1358 n.*. Although § 315(b) provides that its

time bar “shall not apply to a request for joinder under

subsection (c),” it is undisputed that no such “request for

joinder” was made in this case. Indeed, the regulation

governing joinder requires that “[a]ny request for joinder

must be filed . . . no later than one month after the insti-

tution date of any [IPR] for which joinder is requested.”

37 C.F.R. § 42.122(b) (emphasis added). This one-month

deadline, which the Director imposed by regulation after

notice and comment, Changes to Implement Inter Partes

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 31

Review Proceedings, Post-Grant Review Proceedings, and

Transitional Program for Covered Business Method Pa-

tents, 77 Fed. Reg. 48,680–01, 48,681, 2012 WL 3276880

(Aug. 14, 2012), has long since passed. 8

Similarly, while § 317(a) permits the termination of

IPR proceedings that have been instituted “with respect

to any petitioner”—and even permits the Office to “pro-

ceed to a final written decision” where “no petitioner

remains in the inter partes review”—such termination

can only occur “upon the joint request of the petitioner

and the patent owner unless the Office has decided the

merits of the proceeding before the request for termina-

tion is filed.” No joint request for termination was made

in this case. The fact that Congress afforded petitioners

the opportunity to settle with patent owners after institu-

tion does not address the predicate question of whether

the IPR was properly instituted in the first place.

Further support for our reading of § 315(b) is found in

decisions of the Board’s own panels. In Terremark North

8 We recognize that a number of Board panels have

constrained joinder in apparent recognition of a tension

between §§ 315(b) and (c). Where an otherwise time-

barred petitioner seeks to join an IPR under § 315(c),

Board panels consistently have granted such requests

only under limiting conditions, such as (1) that the party

seeking joinder “maintain a secondary role in the proceed-

ing,” Pfizer, Inc. v. Biogen, Inc., No. IPR2017-01115, 2017

WL 3081981 (P.T.A.B. July 18, 2017), Paper No. 13; or

(2) that they appear in the IPR proceeding and attend

depositions and oral hearing, but not file papers, engage

in discovery, or participate in any deposition or oral

hearing, Ion Geophysical Corp. v. WesternGeco LLC, No.

IPR2015-00565, 2015 WL 1906173, at *4 (P.T.A.B. Apr.

23, 2015), Paper No. 14. There was no such limitation on

YP Interactive’s participation in this IPR.

32 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

America LLC v. Joao Control & Monitoring Systems, LLC,

No. IPR2015-01482, 2015 Pat. App. LEXIS 12695

(P.T.A.B. Dec. 28, 2015), Paper No. 10, the panel con-

fronted a situation involving multiple petitioners seeking

institution of an IPR, in which some but not all of the

petitioners were time-barred. In that case, CoxCom was

the only petitioner that was not served with a complaint

more than one year before the IPR petition was filed.

2015 Pat. App. LEXIS 12695, at *19. The petitioners

argued that, because CoxCom was not time-barred,

§ 315(b) should not apply to the jointly filed IPR petition.

Id. The Board rejected this argument based on the rea-

soning set forth in an earlier decision, PNC Bank, N.A. v.

Maxim Integrated Products, Inc., No. CBM2014-00041,

2014 WL 2536982, at *2 (P.T.A.B. June 3, 2014), Paper

No. 19, in which the Board denied institution of CBM

review where PNC Bank was “both a petitioner . . . and a

real party in interest,” and previously filed a civil action

challenging the validity of claims of the challenged pa-

tent. Id. at *2. This set of facts resulted in institution

being barred under § 325(a)(1), notwithstanding that

other named petitioners were not barred by this provi-

sion. Id. The Board held that, as a result, Ҥ 325(a)(1)

precludes institution of a review in this proceeding,”

notwithstanding that other named petitioners were not

barred by this provision. Id.

Notably, the Board also considered, but rejected, the

petitioners’ argument that § 325(a)(1) would not bar

institution if PNC were to “forswear all further control

and participation in this case” or have adverse judgment

entered against it, permitting the other petitioners to

proceed without its involvement. 9 Id. The Board rea-

9 37 C.F.R. § 42.73(b) provides that “[a] party may

request judgment against itself at any time during a

proceeding.”

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 33

soned that, because “PNC has already exerted substantial

control over the case” and because “granting PNC’s re-

quest for adverse judgment would not obviate the control

that PNC has already exerted in this proceeding by its

filing of the Petition,” ruling upon PNC’s motion for

judgment “would not alter [its] conclusion that § 325(a)(1)

precludes institution of a CBM review as requested in the

Petition.” Id. 10

Turning back to Terremark, the Board there wrote

that the non-CoxCom petitioners, like PNC, “already have

exerted substantial control over the case by participating

in filing the Petition, appointing counsel, etc.,” and there-

fore “[t]he presence of CoxCom . . . does not remove the

statutory bar.” 2015 Pat. App. LEXIS 12695, at *21.

Here, too, “removing” Ingenio/YP Interactive from the IPR

would not alter the fact that it has participated for several

years in this proceeding in violation of § 315(b). Appel-

lees’ unsupported assertion that there is nothing about

the relationship between these parties that indicates

control over the other joint petitioners by Ingenio/YP

Interactive does not change our view. Where the parties

choose to be joint petitioners in a single petition, the

petition must—under current law—be assessed in light of

that choice.

In conclusion, to the extent Petitioners rely on

§§ 315(b), 315(c), and 317(a) to argue that the Board’s

10 At oral argument, counsel for the Director was

unable to articulate why the fact that PNC involved CBM

review, rather than an IPR, was relevant, given that the

applicable statutes are similarly worded. See Oral Arg. at

33:45–33:55. Nor did counsel for the Director or for

Petitioners explain why additional fact-finding (or re-

mand) would be necessary on the issue of Ingenio/YP

Interactive’s control over or active involvement in this

IPR proceeding.

34 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

institution of IPR proceedings in this case was “harmless,”

we have made clear that “[t]he timely filing of a petition

under § 315(b) is a condition precedent to the Director’s

authority to act”—indeed, it “sets limits on the Director’s

statutory authority to institute.” Wi-Fi One, 878 F.3d at

1374. There is nothing “harmless” about the institution of

this IPR in excess of statutory authority and contrary to

“the law’s demands.” SAS, 138 S. Ct. at 1359.

Finally, we conclude that a remand for consideration

of this multi-petitioner issue is not warranted. Neither

Petitioners nor CTC seek a remand for further Board

proceedings. That fact is significant not only because of

the IPR regime’s general policy of expedition, see 35

U.S.C. §§ 314(b), 316(a)(11), but also because the IPR

regime creates “a party-directed, adversarial process”

rather than an “agency-led, inquisitorial process,” SAS,

138 S. Ct. at 1355. After all, “it’s the petitioner, not the

Director, who gets to define the contours of the proceed-

ing.” Id.

Only the Director suggests a remand on this issue.

But the Director identifies no material facts requiring

further development on remand. And, the Director has

not explained exactly what the Board might wish to, or be

able to, consider on remand. The issue in this case thus

raises only a legal question, and under current law,

including the current regulation, the answer to the legal

question is already determined in this opinion. The Board

must follow the governing regulations, see, e.g., Creditor v.

Shulkin, 877 F.3d 1040, 1047 (Fed. Cir. 2017), and it must

follow our binding interpretation where, because the

regulation merely parrots the statute, deference is not

owed even to the Director’s interpretation of the regula-

tion, much less to a Board panel’s interpretation, see

supra n.6 (quoting Gonzales v. Oregon). See In re Lovin,

652 F.3d 1349, 1353–54 (Fed. Cir. 2011) (discussing

Brand X and agency’s duty to follow judicial interpreta-

tion of regulations generally, but deferring to intervening

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 35

change of regulation). It is conceivable that the Director

might promulgate a new regulation during remand—

though the Director has not even taken a position on this

issue, much less suggested that a regulation is on the

horizon, and there would be a question about retroactive

application of any such changed regulation. See Bowen v.

Georgetown Univ. Hosp., 488 U.S. 204, 208–09 (1988). We

know of no authority or sound basis to support a remand

to allow for a possible intervening change of law, especial-

ly in the context of a statute prizing expedition. We

therefore vacate the Board’s Final Written Decision and

remand so the Board can dismiss this IPR proceeding.

We leave Petitioners to litigate the merits of the ’836

patent in the long-stayed district court case, where there

will be no estoppel bar to such litigation, as CTC has

expressly conceded.

III. CONCLUSION

For the foregoing reasons, we vacate the Board’s Final

Written Decision and remand for the Board to dismiss

IPR2013-00312.

VACATED AND REMANDED

COSTS

Costs to Click-to-Call Technologies, LP.

United States Court of Appeals

for the Federal Circuit

______________________

CLICK-TO-CALL TECHNOLOGIES, LP,

Appellant

v.

INGENIO, INC., YELLOWPAGES.COM, LLC,

Appellees

ANDREI IANCU, UNDER SECRETARY OF

COMMERCE FOR INTELLECTUAL PROPERTY

AND DIRECTOR OF THE UNITED STATES

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________

2015-1242

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2013-

00312.

______________________

TARANTO, Circuit Judge, concurring.

I join the panel’s opinion in full. Here I add a few

thoughts on why I am unpersuaded by the key rationales

set forth in the dissent from the court’s en banc holding.

The en banc issue is governed by statutory language

that, as the panel opinion explains, is plain in its mean-

ing. In September 2001, Ingenio (then called Keen) was

served with a complaint asserting that it infringed the

2 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

’836 patent, and there is no dispute about the content of

the complaint or the propriety of service. In 2013, Ingenio

filed a petition for an inter partes review (IPR)—far more

than one year after the 2001 service. With respect to the

en banc issue, those facts make § 315(b)’s time bar appli-

cable by its plain terms. Nothing in that language makes

relevant whether the 2001 complaint was eventually

dismissed voluntarily without prejudice; the fact that

service occurred does not change when the complaint (or

action) is later dismissed, whether voluntarily or other-

wise, and whether with or without prejudice to the right

to file another action on the same claims. No other provi-

sion of the statute calls for a different conclusion. Indeed,

whereas Congress in § 315(a)(2)(C) specifically addressed

the effect of a voluntary dismissal of an IPR petitioner’s

own district court complaint challenging a patent, Con-

gress left § 315(b) unmodified by any language addressed

to dismissals of patentees’ complaints.

This is not a case where the scope of a word or phrase

in the statute, considered alone and in context, “may be

open to competing interpretations” as in Kasten v. Saint-

Gobain Performance Plastics Corp., 563 U.S. 1, 7 (2011),

and Dolan v. U.S. Postal Service, 546 U.S. 481, 486

(2006). In Kasten, the Court addressed a genuine textual

issue about whether the phrase “filed any complaint” in

29 U.S.C. § 215(a)(3) encompasses an oral complaint or

instead requires a writing. 563 U.S. at 7. In Dolan, the

Court addressed a genuine textual issue about whether

the phrase “negligent transmission” of the mail, when

read in the context of the statute, encompassed what

might be the last act of the transmission—a negligent

placement of a package on a porch. 546 U.S. at 486.

Numerous authorities state that statutory language

as plain in its meaning as to an issue as is § 315(b), when

read alone and in context, is controlling on that issue,

subject to very narrow exceptions. See, e.g., SAS Inst. Inc.

v. Iancu, 138 S. Ct. 1348, 1357 (2018) (“We need not and

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 3

will not invent an atextual explanation for Congress’s

drafting choices when the statute’s own terms supply an

answer. See United States v. Ron Pair Enterprises, Inc.,

489 U.S. 235, 240–41 (1989) (‘[A]s long as the statutory

scheme is coherent and consistent, there generally is no

need for a court to inquire beyond the plain language of

the statute’).” (alteration in original) (unofficial reporter

citations omitted)); Cyan, Inc. v. Beaver Cty. Employees

Ret. Fund, 138 S. Ct. 1061, 1072 (2018) (“Even assuming

clear text can ever give way to purpose, [the Director]

would need some monster arguments on this score to

create doubts about [§ 315(b)’s] meaning.”); Star Athletica,

L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1010

(2017); Sebelius v. Cloer, 569 U.S. 369, 381 (2013) (“when

[a] statute’s language is plain, the sole function of the

courts—at least where the disposition required by the text

is not absurd—is to enforce it according to its terms”)

(alteration in original) (internal quotation marks omit-

ted); Gross v. FBL Fin. Servs., Inc., 557 U.S. 167, 175

(2009); Barnhart v. Sigmon Coal Co., 534 U.S. 438, 450

(2002); Board of Governors of Fed. Reserve Sys. v. Dimen-

sion Fin. Corp., 474 U.S. 361, 368 (1986).

I see no basis strong enough to justify the proposed

contrary-to-text result urged by the Director—that

§ 315(b) becomes inapplicable when the complaint whose

service would otherwise bar the IPR was dismissed volun-

tarily without prejudice under Rule 41(a) of the Federal

Rules of Civil Procedure. Respecting § 315(b)’s plain

meaning leaves the statutory scheme “coherent and

consistent,” Barnhart, 534 U.S. at 450; Ron Pair Enters.,

489 U.S. at 240, and without “absurd” results, Sebelius,

569 U.S. at 381. I therefore agree that the Director’s

position must be rejected and the task of making any

advisable adjustments left to Congress.

4 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

I

The principal rationale offered to support the Direc-

tor’s position is that a background rule of law exists that

Congress must have intended to modify § 315(b)’s plain

meaning. The asserted “rule” is that “[t]he effect of a

voluntary dismissal without prejudice pursuant to Rule

41(a) is to render the proceedings a nullity and leave the

parties as if the action had never been brought.” Bonne-

ville Assocs., Ltd. P’ship v. Barram, 165 F.3d 1360, 1364

(Fed. Cir. 1999) (Bonneville II) (alteration in original)

(internal quotation marks omitted). This court has also

stated the point in terms seemingly applicable even to an

involuntary dismissal without prejudice. Graves v. Prin-

cipi, 294 F.3d 1350, 1356–57 (Fed. Cir. 2002) (“[A]s a

matter of law, once his appeal was dismissed—for what-

ever purpose and whether with or without prejudice—it

was as if the appeal had never been filed. . . . The dismis-

sal of an action without prejudice leaves the parties as

though the action had never been brought.”). The Direc-

tor invokes those formulations as providing a “solidly

grounded rule” of civil procedure, Greenlaw v. United

States, 554 U.S. 237, 250 (2008), that Congress must have

understood would override the contrary plain meaning of

§ 315(b) by nullifying the time-bar effect of service of a

complaint if that complaint is later voluntarily dismissed

without prejudice.

But this court has already observed that the cases ar-

ticulating an “as if never brought” principle do not “ad-

dress § 315(b) or whether service of a complaint can be

nullified.” Shaw Indus. Grp., Inc. v. Automated Creel

Sys., Inc., 817 F.3d 1293, 1301 (Fed. Cir. 2016). And even

aside from the distinction between nullifying the effect of

a complaint’s service and nullifying the effect of a com-

plaint’s filing, the case law invoked by the Director (and

the dissent) does not justify overriding the plain meaning

of the § 315(b) bar.

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 5

The fundamental problem with the Director’s position

is that it takes judicial language used as explanation in

particular contexts and mistakenly treats the language as

establishing a rule sweeping enough to apply to the

§ 315(b) context. That is a mistake here because the

federal courts do not always treat a voluntary, without-

prejudice dismissal as leaving the dismissed action with-

out legal effect. Only for some purposes does a voluntary,

without-prejudice dismissal leave the dismissed action

without legal effect, as if it had never been brought; for

other purposes, the dismissed action continues to have

legal effect. And the legal effect at issue for § 315(b)—

triggering the start of a clock for filing an action—has

never been in the first category. The Director has noted

that he knows of no case holding that a voluntary, with-

out-prejudice dismissal of a complaint nullifies the statu-

tory effect of the filing of that complaint (or, here, of its

service) of starting a clock on initiating another proceed-

ing. Oral Arg. at 30:08–31:20. We cannot soundly infer a

nontextual exception to § 315(b)’s plain-meaning applica-

tion based on a nullification principle that has not been

applied, and certainly is not established, in the clock-

starting situation present here.

A

Some of this court’s and other courts’ cases deny cer-

tain legal effects to the filing of a complaint later volun-

tarily dismissed without prejudice. One such effect

concerns what is needed to satisfy (or toll) a time limit on

initiating an action or appeal. The rationale is simple. A

particular case or appeal must itself be initiated within a

prescribed time. A filing that initiated an earlier case or

appeal, if voluntarily dismissed without prejudice, does

not meet, or toll the running of the clock for meeting, the

time limit for filing the document that initiates the later

(even substantively identical) case.

6 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

This court so held in Bonneville II, a government-

contract dispute in which Bonneville timely appealed to

the General Services Administration Board of Contract

Appeals; voluntarily dismissed that appeal to pursue

relief in the Claims Court instead; was denied a forum for

lack of jurisdiction there (as this court held in Bonneville

Assocs. v. United States, 43 F.3d 649, 655 (Fed. Cir. 1994)

(Bonneville I)); and then returned to the Board by filing a

new appeal. This court in Bonneville II held that the new

appeal was untimely because the earlier Board appeal did

not count to meet the applicable time limit for an appeal

to the Board. 165 F.3d at 1363–65. In the same vein, we

held in Graves that the time limit for appealing to the

Veterans Court, 38 U.S.C. § 7266(a), had to be met by the

notice of appeal initiating that appeal, and could not be

met by an earlier, voluntarily dismissed notice of appeal

from the same Board of Veterans’ Appeals decision. 294

F.3d at 1355–56. Other circuits’ decisions are to the same

effect in not allowing the satisfaction, or tolling, of a

limitations period by an earlier filing that is voluntarily

dismissed without prejudice. 1

1 See, e.g., Jorge v. Rumsfeld, 404 F.3d 556, 563 (1st

Cir. 2005) (“[A] prescriptive period is not tolled by filing a

complaint that is subsequently dismissed without preju-

dice.”); Garfield v. J.C. Nichols Real Estate, 57 F.3d 662,

666 (8th Cir. 1995) (“A dismissal without prejudice does

not toll a statute of limitations.”); Beck v. Caterpillar Inc.,

50 F.3d 405, 407–08 (7th Cir. 1995) (holding that the

statute of limitations was not tolled and continued to run

when plaintiff voluntarily dismissed his first suit under

Rule 41(a)); Simons v. Sw. Petro-Chem, Inc., 28 F.3d 1029,

1030 (10th Cir. 1994) (holding that the plaintiff’s Title VII

claim was not timely filed because her earlier case that

was voluntarily dismissed without prejudice under Rule

41(a)(2) did not toll the statutory limitations period);

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 7

But the § 315(b) en banc issue does not involve the le-

gal effect of the type at issue in the cases just described.

A legal effect of that type would be at issue if an IPR

petitioner filed a petition within the one-year period,

voluntarily dismissed the petition without prejudice, then

filed another IPR petition outside the period: the earlier

(timely) petition would be disregarded in assessing the

timeliness of the later petition. Here, there were no

successive IPR petitions, and the issue is not whether a

Robinson v. Willow Glen Acad., 895 F.2d 1168, 1169 (7th

Cir. 1990) (holding that a tolling provision under Wiscon-

sin state law that was tied to the “commencement of an

action” did not apply if that action was then voluntarily

dismissed under Rule 41(a)(2)); Davis v. Smith’s Transfer,

Inc., 841 F.2d 139, 140 (6th Cir. 1988) (per curiam) (no

tolling of statute of limitations based on earlier suit

dismissed under Rule 41(a)); Dupree v. Jefferson, 666 F.2d

606, 610–11 (D.C. Cir. 1981) (taking note of the “rule”

“that a statute of limitations is not tolled during pendency

of an action voluntarily dismissed without prejudice”);

Curtis v. United Transp. Union, 648 F.2d 492, 495 (8th

Cir. 1981) (stating “the rule that the entry of a voluntary

dismissal without prejudice leaves the action as if suit

had never been brought for purposes of the statute of

limitations”); Humphreys v. United States, 272 F.2d 411,

412 (9th Cir. 1959) (holding that a voluntary dismissal

under Rule 41(a)(2) does not toll the statute of limitations

under the Federal Tort Claims Act).

See also Willard v. Wood, 164 U.S. 502, 523 (1896)

(noting “[t]he general rule in respect of limitations . . .

that if . . . [an] action abates or is dismissed, and, during

the pendency of the action, the limitation runs, the reme-

dy is barred”); 8 Moore’s Fed. Prac. Civ. § 41.33(6)(d)

(2018); 9 Charles A. Wright & Arthur R. Miller, Fed. Prac.

& Proc. Civ. § 2367 (3d ed. 2018).

8 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

voluntarily dismissed filing could be treated as satisfying

the one-year rule.

Rather, the issue is whether the 2001 service of a

complaint asserting that Ingenio infringed the ’836 patent

should be treated as losing its clock-starting legal effect

for filing an IPR before the Board, just because the

properly served complaint was later voluntarily dismissed

without prejudice. None of the just-cited cases involved

that legal effect. Indeed, while those cases insist on

enforcing a time limit on initiating legal proceedings for

the same or similar claims brought by the same party in

(usually) the same forum, the Director’s position here

would have the opposite effect of nullifying a time limit—

and doing so based on the filing of different claims (inva-

lidity, not infringement) by a different party (accused

infringer, not patent owner) in a different forum (Board,

not district court). In multiple ways, then, the main line

of authority invoking the “as if never brought” rationale

does not apply to the circumstances addressed by § 315(b).

The clock-starting effect that is at issue here is also

different from certain other legal effects that are denied to

a complaint once it has been voluntarily dismissed with-

out prejudice. Notably, once a complaint has been volun-

tarily dismissed without prejudice, most further action in

the very case initiated by that complaint is neither re-

quired nor permitted. 2 Relatedly, as indicated by the

2 See, e.g., In re Matthews, 395 F.3d 477, 480 (4th

Cir. 2005) (“[A]fter an action is voluntarily dismissed, the

court lacks authority to conduct further proceedings on

the merits.”); Williams v. Clarke, 82 F.3d 270, 272–73 (8th

Cir. 1996) (holding that voluntary dismissal under Rule

41(a)(1) applies to habeas corpus petitions filed under 28

U.S.C. § 2254 and strips the appellate court of jurisdiction

over the action); Norman v. Arkansas Dep’t of Educ., 79

F.3d 748, 751 (8th Cir. 1996) (holding that after the

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 9

“without prejudice” language, invocation of issue or claim

preclusion is generally not available based on the action

that was voluntarily dismissed without prejudice. 3 Those

legal effects are not what is at stake here.

district court dismissed the case without prejudice, it

“lacked jurisdiction to take any further action in it, in-

cluding dismissing the case with prejudice”); Smith v.

Dowden, 47 F.3d 940, 943 (8th Cir. 1995) (holding that

the voluntary dismissal of a claim in the bankruptcy court

under Fed. R. Bankr. P. 3006 strips the bankruptcy court

of its equitable jurisdiction and restores the dismissed

party’s jury-trial right); LeCompte v. Mr. Chip, Inc., 528

F.2d 601, 603 (5th Cir. 1976) (explaining that a plaintiff

generally cannot appeal a voluntary dismissal without

prejudice under Rule 41(a)(2), but may appeal if the order

has the effect of being a dismissal with prejudice).

3 See, e.g., Harvey Specialty & Supply, Inc. v. Anson

Flowline Equip. Inc., 434 F.3d 320, 324 (5th Cir. 2005)

(holding that a voluntary dismissal under Rule 41(a)(1)

does not result in a final judgment that could support

collateral estoppel or the relitigation exception under the

Anti-Injunction Act); AVX Corp. v. Cabot Corp., 424 F.3d

28, 32–34 (1st Cir. 2005) (holding that claim preclusion

did not apply to claims that had been voluntarily dis-

missed under Rule 41(a)(1)(ii) by joint stipulation of the

parties); In re Corey, 892 F.2d 829, 835 (9th Cir. 1989)

(holding that a voluntary dismissal without prejudice “has

no res judicata effect”); In re Piper Aircraft Distrib. Sys.

Antitrust Litig., 551 F.2d 213, 219–20 (8th Cir. 1977)

(holding that the district court erred by giving preclusive

effect to the denial of class action status under Rule 23(c)

in another case that had been subsequently dismissed

without prejudice pursuant to Rule 41(a)(1)(i), because

there was no “valid and final judgment” necessary for

“collateral estoppel”). Cf. Navellier v. Sletten, 262 F.3d

10 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

B

As just set forth, although a voluntary, without-

prejudice dismissal has been held to eliminate some legal

effects of a dismissed action, the clock-starting effect of

§ 315(b) is not among them. Nor does the law recognize a

universal nullification rule that such a dismissal elimi-

nates all legal effects of a dismissed action. To the con-

trary, in various circumstances, such a dismissed action

has continuing legal effects, i.e., is not treated as if it had

never been brought.

For example, Rule 41 itself makes clear that a first

voluntary dismissal has an effect in forbidding a without-

prejudice dismissal of a second action “based on or includ-

ing the same claim.” Fed. R. Civ. P. 41(a)(1)(B). Rule 41

adds that a first such dismissal may give rise to a court-

imposed requirement that the costs of the first action be

paid as a precondition to litigation of a second action

based on or including the same claim against the same

defendant. Fed. R. Civ. P. 41(d). And a voluntary, with-

out-prejudice dismissal may give rise to costs and fees

under Rule 11. See Wright & Miller, §§ 1336, 2367.

Continuing effects are also evident in sources outside

the Federal Rules of Civil Procedure. For example, as the

Director appears to acknowledge, the filing of a patent

infringement complaint, even if later voluntarily dis-

missed, can play a role, even a definitive role, in proving

the defendant’s knowledge of the patent if the defendant

is later charged with willful infringement. Intervenor’s

Second Supp. Br. 8 (“[D]ismissing a complaint without

prejudice could have ongoing legal consequences because,

923, 938 (9th Cir. 2001) (finding no abuse of discretion in

district court’s voluntary dismissal of claims under Rule

41(a)(2) and holding that the court did not have to inform

the jury that the dismissed claims might later be refiled).

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 11

for example, the notice turns a defendant’s unwitting

actions into intentional ones.”); see also Fed. R. Evid.

201(b)(2) (allowing judicial notice of facts from “sources

whose accuracy cannot reasonably be questioned”). And

as the panel opinion notes, the filing of such a complaint,

though later voluntarily dismissed, has formed the basis

for declaratory judgment jurisdiction where the initial

defendant later brings a validity challenge: the initial

action by the patentee may establish the necessary case

or controversy for the later action. See TransWeb, LLC v.

3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir.

2016).

Another continuing effect is evident in the context of

28 U.S.C. § 1500. The Supreme Court in Keene v. United

States addressed the § 1500 bar on the Court of Federal

Claims’s jurisdiction over a case when, at the time of its

filing, a sufficiently related action is pending in another

court, and the Court held that the bar continues to apply

even after the other court action has been voluntarily

dismissed without prejudice. 508 U.S. 200, 203, 207–09

(1993); see Brief for the United States, Keene Corp. v.

United States, No. 92-166, 1993 WL 290106, at *3 (filed

Jan. 25, 1993). The other court action, though voluntarily

dismissed without prejudice, is not treated in that context

as if it had never been brought.

Similarly, in Flowers v. Secretary of the Department of

Health and Human Services, which involved a Vaccine

Act provision barring certain benefits if a plaintiff had

certain related actions pending, this court held that the

bar applied even after the other actions were voluntarily

dismissed without prejudice. 49 F.3d 1558, 1560–62 (Fed.

Cir. 1995). The earlier actions were not treated as if

never brought. And in Bonneville I, this court held that

the Claims Court lacked jurisdiction over Bonneville’s

claim because Bonneville had initially brought an appeal

to the Board and had therefore elected that forum—even

though Bonneville had later obtained a voluntary, with-

12 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

out-prejudice dismissal of its Board appeal. 43 F.3d at

651, 653–55. The earlier action, though it had been

voluntarily dismissed without prejudice, blocked the

Claims Court case—the opposite of being treated as if it

had never been brought.

C

In short, the background law on the nullification ef-

fect of a voluntary, without-prejudice dismissal is a mixed

bag, and it does not state a near-monolithic rule with only

aberrational exceptions. Some effects are nullified, some

not. More particularly, it is anything but established—in

fact, the Director has acknowledged the absence of any

authority holding—that such a dismissal nullifies the

legal effect at issue here: a clock-starting effect prescribed

by statute. In these circumstances, I conclude, there is no

basis in the asserted background law for overriding the

plain meaning of § 315(b).

II

When the Director moves beyond his argument about

background law, he presents nothing to indicate a clear

congressional intent contrary to the plain meaning.

Legislative history indications of congressional policy at

most establish that § 315(b) is generally based on an

assessment of the period suitable for a formally accused

infringer (or privies or real parties in interest) to shape

any IPR petition after formally receiving notice of a

patentee’s charges of infringement, with the patentee and

district courts thereafter given repose against IPR peti-

tions filed by that accused infringer (or privies or real

parties in interest). See 157 Cong. Rec. S5429 (daily ed.

Sept. 8, 2011) (statement of Sen. Kyl) (stating that the

“section 315(b) deadline afford[s] defendants a reasonable

opportunity to identify and understand the patent claims

that are relevant to the litigation”); H.R. Rep. No. 112-98,

at 48 (2011), reprinted in 2011 U.S.C.C.A.N. 67, 78 (ex-

pressing concern about use of IPR proceedings as a “tool[]

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 13

for harassment” by “repeated litigation and administra-

tive attacks”). Those policies do nothing to undermine the

plain meaning of the text: a bright-line rule of one year

from service is a sensible prescription for serving those

purposes. 4

The dissent suggests that, when an action is voluntar-

ily dismissed without prejudice, “the accused infringer is

led to think that the controversy has dissipated” and “the

notice function of the filing is effectively eliminated.”

Dissent at 11. Those suggestions, even if accepted on

their own terms, do not establish the kind of incoherence

or absurdity that would support adoption of an exception

for voluntary dismissals without prejudice. Congress can

sensibly choose a bright-line rule based on underlying

notice concerns. In any event, the suggestions are, I

think, weak on their own terms. The point of a dismissal

“without prejudice” is to preserve, rather than eliminate,

the ability of the plaintiff to sue the defendant again on

the same claim. No defendant, if not given something

more, such as a covenant not to sue, can reasonably

understand a without-prejudice dismissal to give repose

as to future assertion of that very patent; no defendant in

that situation is entitled “to think that the controversy

4 Several legislators opposed § 315(b) in the House

bill for exactly that reason, explaining that § 315(b)’s

bright-line “12-month deadline” is not “tied to substantive

progress in patent litigation, such as the entry of an order

by the district court construing the relevant patent

claims,” and arguing that a strict 12-month deadline is

“arbitrary” as it “does not account for the complexity of

many patent cases that can encompass dozens of patents

and defendants and hundreds of separate patent claims.”

H.R. Rep. No. 112-98, at 164–65. A proposed amendment

offered by one of those legislators to tie the deadline to

entry of a claim construction order failed. Id. at 58.

14 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

has dissipated.” Indeed, as already noted, the bringing of

an infringement suit, even if later voluntarily dismissed,

can play a role, even a decisive role, in establishing the

case or controversy needed for the once-accused infringer

to bring an action for a declaratory judgment.

The dissent and the Director (in the Luminara case to

which the dissent refers) suggest another reason that the

statutory purpose requires an exception to § 315(b) for

service of a complaint that is later voluntarily dismissed

without prejudice. Specifically, they suggest a possibility

of manipulative abuse if § 315(b) is applied in accordance

with its terms, without such an exception. Dissent at 12;

Oral Arg. at 19:45–20:22, Luminara Worldwide, LLC v.

Iancu, Nos. 17-1629, -1631, -1633 (Fed Cir. Apr. 5, 2018).

The scenario of abuse is this: A patent owner could sue

many possible infringers, serve them with complaints,

and then quickly and unilaterally dismiss all of those

cases under Rule 41(a)(1)(A)(i), which applies before the

filing of an answer or motion for summary judgment.

Such a unilateral dismissal would start the one-year IPR

clock for all such defendants under § 315(b), were there no

exception. After the year had elapsed without any of

those defendants filing an IPR challenge, the patent

owner could again sue any of them on the same patent,

without fear of an IPR initiation by any of them (or their

privies or real parties in interest), though others could file

IPR challenges.

This hypothesized scenario cannot support the sug-

gested inference that Congress, to avoid such abuse, must

have silently prescribed an exception to § 315(b) for

voluntary dismissals without prejudice. Notably, the

scenario is purely hypothetical, as far as we know. We

have been pointed to no evidence that any patent owners

have behaved in the way posited.

“[T]he Court rarely invokes [an absurd results] test to

override unambiguous legislation.” Barnhart v. Sigmon

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 15

Coal Co., Inc., 534 U.S. 438, 459 (2002). The stringency of

this test for overcoming plain meaning reflects a strong

deference to the legislature as the instiution for identify-

ing and curing defects in laws. See SAS, 138 S. Ct. at

1358 (“whatever its virtues or vices, Congress’s prescribed

policy here is clear”); Antonin Scalia & Bryan A. Garner,

Reading Law: The Interpretation of Legal Texts 237–39

(2012) (explaining that “error-correction for absurdity can

be a slippery slope” and that the absurdity doctrine

should accordingly be narrow). I do not think that the

merely hypothetical possibility of the abuse posited here

makes the bright-line rule in § 315(b) absurd or incoher-

ent. Cf. Silva-Hernandez v. U.S. Bureau of Citizenship &

Immigration Servs., 701 F.3d 356, 363–64 (11th Cir. 2012)

(ruling that hypothetical scenarios did not show absurdity

sufficient to reject a provision’s plain meaning).

That is especially so because there are reasons to

doubt the likely significance of the hypothesized scenario

even beyond the fact that it has not yet shown up in

reality. The scenario posits that the initially sued de-

fendants, although already sued once on the patent,

would decide to rely on the belief that they are substan-

tially unlikely to be sued on it again—a premise that is

dubious given that the initial dismissal was specifically

without prejudice to the patentee’s right to file again,

there has been no covenant not to sue, and the posited

legal stratagem for avoiding IPRs is apparent. Without

such (doubtful) reliance, it is plausible that one or more of

the defendants would initiate IPR challenges to the

patent at issue within the one-year period, defeating the

posited scheme of the patentee. The assumptions of legal

ignorance, naiveté, or uniform fingers-crossed risk as-

sessment seem strained.

The posited scenario also requires downplaying evi-

dent risks to the patentee of implementing the scheme.

By suing many defendants in the first place, the patentee

would be expanding the pool of persons objectively threat-

16 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

ened by the patent, which would seem to increase the

likelihood of an early IPR challenge and to lower the cost

of an IPR for any individual defendant if the defendants

file jointly. That risk to the patentee further diminishes

the likelihood of the abuse scenario. So does the risk that

the patentee would face sanctions—in the initial litigation

or later litigation—for acting as posited in the scenario.

See Chambers v. NASCO, Inc., 501 U.S. 32, 46–47 (1991)

(explaining that inherent power “extends to a full range of

litigation abuses”); Roadway Express, Inc. v. Piper, 447

U.S. 752, 766 (1980) (discussing power to sanction the

“willful[] abuse [of] judicial processes”); Willy v. Coastal

Corp., 503 U.S. 131, 136–37 (1992) (discussing sanction

power even where court lacked jurisdiction); Cooter & Gell

v. Hartmarx Corp., 496 U.S. 384, 395–96 (1990) (post-

dismissal sanction power); Winslow v. Hunter (In re

Winslow), 17 F.3d 314, 315 (10th Cir. 1994) (per curiam)

(discussing sanctions for “a pattern of litigation activity

which is manifestly abusive”) (quoting Johnson v. Cowley,

872 F.2d 342, 344 (10th Cir. 1989)).

Finally, and in any event, the hypothetical abuse sce-

nario cannot support adoption of the particular judicial

modification of § 315(b)’s plain terms proposed by the

Director—which is a gross mismatch for the abuse scenar-

io. The suggested exception to § 315(b) would go far

beyond dismissals under Rule 41(a)(1)(A)(i), which are the

only ones the plaintiff can effectuate unilaterally. The

suggested exception would also cover voluntary, without-

prejudice dismissals under Rule 41(a)(1)(A)(ii)—which are

within the control of the defendant (later petitioner)—and

under Rule 41(a)(2)—which are within the control of the

court. Unilateral manipulation is not possible under

those provisions: for all of those dismissals, the defendant

and the court have power to protect against the posited

abuse. (The present case involved a non-unilateral dis-

missal.) There is no basis for inferring, or adopting, a

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 17

nontextual exception that extends far beyond a very

limited scenario of merely hypothetical potential abuse.

***

In sum, I think that the statutory issue in this case

falls within the principle that “where the language of an

enactment is clear, and construction according to its

terms does not lead to absurd or impracticable conse-

quences, the words employed are to be taken as the final

expression of the meaning intended.” United States v.

Mo. Pac. R.R. Co., 278 U.S. 269, 278 (1929). If there turns

out to be a problem in the statute’s application according

to its plain meaning, it is up to Congress to address the

problem.

United States Court of Appeals

for the Federal Circuit

______________________

CLICK-TO-CALL TECHNOLOGIES, LP,

Appellant

v.

INGENIO, INC., YELLOWPAGES.COM, LLC,

Appellees

ANDREI IANCU, UNDER SECRETARY OF

COMMERCE FOR INTELLECTUAL PROPERTY

AND DIRECTOR OF THE UNITED STATES

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________

2015-1242

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2013-

00312.

______________________

DYK, Circuit Judge, joined by LOURIE, Circuit Judge,

dissenting.

The en banc issue in this case is whether the time bar

of 35 U.S.C. § 315(b) applies when a petitioner is served

with a complaint more than one year before the petition

for inter partes review (“IPR”), but the complaint is dis-

missed without prejudice. En banc consideration was

occasioned by the fact that two different panels reached

2 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

opposite conclusions on this issue in this case and in

Luminara Worldwide, LLC, v. Matal, No. 17-1629 (Fed.

Cir. filed Feb. 13, 2018). The en banc court now agrees

with the Click-to-Call panel and holds that section 315(b)

applies, even when the earlier complaint was dismissed

without prejudice. 1 In our view, the use of traditional

tools of statutory construction leads to a conclusion oppo-

site to the en banc court.

Section 315(b) provides that “inter partes review may

not be instituted if the petition requesting the proceeding

is filed more than 1 year after the date on which the

petitioner . . . is served with a complaint alleging in-

fringement of the patent.” In our view, the Board’s inter-

pretation of the statute was correct, and section 315(b)’s

time-bar should not apply when the underlying suit has

been voluntarily dismissed without prejudice. We reach

this conclusion for three reasons.

First, the panel opinion relies on the language of sec-

tion 315(b) as being unambiguous, because, on its face, it

does not exclude voluntary dismissals without prejudice.

But, the meaning of “service of a complaint” is not on its

face unambiguous. In closely comparable circumstances,

the Supreme Court has held that it is necessary to look

beyond the language, to the context and purpose of the

statute. Kasten v. Saint-Gobain Performance Plastics

Corp., involved language in the Fair Labor and Standards

Act (the “Act”). 563 U.S. 1, 7 (2011). The Act’s anti-

retaliation section prevented employers from “dis-

charg[ing] or in any other manner discriminat[ing]

against any employee because such employee has filed

any complaint . . . under or related to [the Act].” 29

1 Contrary to the panel opinion (Panel Op. 14), this

issue was not addressed, much less resolved, in the en

banc Wi-Fi opinion. See Wi-Fi One, LLC v. Broadcom

Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc).

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 3

U.S.C. § 215(a)(3) (emphasis added). The issue was

whether an oral complaint fit within the language “filed

any complaint.” Kasten, 563 U.S. at 7. The Court con-

cluded “the text, taken alone, cannot provide a conclusive

answer to our interpretive question . . . . We must look

further.” Id. at 11. The Court examined how the words

had been used by “legislators, administrators, and judg-

es,” id. at 8, and reviewed “contemporaneous judicial

usage,” id. at 9. These sources helped the Court conclude

that oral complaints should qualify, because “considering

the provision in conjunction with the purpose and context

[led the Court] to conclude that only one interpretation is

permissible.” Id. at 7.

This situation is similar. In this context, the concept

of service and filing seem to be equivalent. Section

315(b)’s phrase, “served with a complaint,” is almost the

same as the phrase “filed any complaint” at issue in

Kasten. In Kasten, the issue was whether the complaint

could include written and oral complaints, whereas the

issue here is whether the complaint could include a com-

plaint later voluntarily dismissed without prejudice. Both

are situations where “[t]he definition of words in isola-

tion,” is not “necessarily controlling,” or even clear in

terms of ordinary meaning. Dolan v. U.S. Postal Serv.,

546 U.S. 481, 486 (2006). Rather, “[i]nterpretation of

[the] word or phrase depends upon reading the whole

statutory text, considering the purpose and context of the

statute, and consulting any precedents or authorities that

inform the analysis.” Id.; see also FDA v. Brown & Wil-

liamson Tobacco Corp., 529 U.S. 120, 132 (2000) (“In

determining whether Congress has specifically addressed

the question at issue, a reviewing court should not confine

itself to examining a particular statutory provision in

isolation. The meaning—or ambiguity—of certain words

or phrases may only become evident when placed in

context.”).

4 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

Second, a well-established background principle sup-

ports the PTO’s reading of the statute. Courts have

typically treated voluntary dismissals without prejudice

as restoring the parties to the situation that existed

before the case had ever been brought. In Bonneville

Assocs. v. Barram, 165 F.3d 1360, 1362–64 (Fed. Cir.

1999), an appeal to the General Services Administration

Board of Contract Appeals had been voluntarily dis-

missed, and the question was whether the requirement of

timely filing had been satisfied by the dismissed appeal.

This made it necessary to “determine the effect of the

voluntary dismissal of Bonneville’s appeal without preju-

dice.” Id. at 1364. Our court recognized that “[t]he rule in

the federal courts is that ‘[t]he effect of a voluntary dis-

missal without prejudice pursuant to Rule 41(a) “is to

render the proceedings a nullity and leave the parties as

if the action had never been brought.”’” Id. (second alter-

ation in original) (quoting Williams v. Clarke, 82 F.3d

270, 273 (8th Cir. 1996)). Thus, dismissal “leaves the

situation as if the suit had never been brought.” Id. at

1363.

Similarly, in Graves v. Principi, 294 F.3d 1350, 1355–

56 (Fed. Cir. 2002), we held that filing an appeal in Vet-

erans Court did not toll the 120-day period for appeals

from the decision of the Board of Veteran’s Appeals, when

the appeal was voluntarily dismissed without prejudice.

We held that “as a matter of law, once [the veteran’s]

appeal was dismissed . . . it was as if the appeal had never

been filed.” Id. We explained that the

dismissal of his initial appeal meant that Mr.

Graves was barred from appealing the January

18, 1998 decision of the Board . . . . because, in

light of the dismissal, he was in the same situa-

tion that he would have been in if he had never

filed a notice of appeal, and by June 18, 1998, the

date of the dismissal, the 120–day period under

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 5

section 7266(a) for filing a notice of appeal had

passed.

Id. at 1356. We reiterated that “[t]he dismissal of an

action without prejudice leaves the parties as though the

action had never been brought.” Id.

Other circuits have likewise treated dismissals with-

out prejudice as restoring the parties to the exact situa-

tion as if the original complaint had never been filed. See,

e.g., Norman v. Ark. Dep’t of Educ., 79 F.3d 748, 751 (8th

Cir. 1996) (“[T]he ‘effect of a voluntary dismissal without

prejudice is to render the proceedings a nullity and leave

the parties as if the action had never been brought.’”

(quoting In re Piper Aircraft Distrib. Sys. Antitrust Litig.,

551 F.2d 213, 219 (8th Cir. 1997))). 2 The understanding

that dismissal without prejudice renders the original

2 See also Harvey Specialty & Supply, Inc. v. Anson

Flowline Equip. Inc., 434 F.3d 320, 324 (5th Cir. 2005)

(“The effect of [a Rule 41(a)(1)] dismissal is to put the

plaintiff in a legal position as if he had never brought the

first suit.” (alteration in original) (quoting LeCompte v.

Mr. Chip, Inc., 528 F.2d 601, 603 (5th Cir. 1976))); Na-

vellier v. Sletten, 262 F.3d 923, 938 (9th Cir. 2001) (“A

dismissal without prejudice . . . leaves the parties where

they would have stood had the lawsuit never been

brought.” (citing In re Corey, 892 F.2d 829, 835 (9th

Cir.1989))); Beck v. Caterpillar, Inc., 50 F.3d 405, 407 (7th

Cir. 1995) (“While [plaintiff’s] first lawsuit was filed

within the limitations period, that suit was voluntarily

dismissed . . . and is treated as if it had never been

filed.”); Simons v. Southwest Petro–Chem, Inc., 28 F.3d

1029, 1030–31 (10th Cir. 1994); Humphreys v. United

States, 272 F.2d 411, 412 (9th Cir. 1959) (“[A] suit dis-

missed without prejudice pursuant to Rule 41(a)(2) leaves

the situation the same as if the suit had never been

brought in the first place.”).

6 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

filing a “nullity” and restores the parties to the situation

that would have prevailed if the original complaint had

never been filed is supported by the leading federal prac-

tice treatise. See 9 CHARLES ALAN WRIGHT & ARTHUR R.

MILLER, FEDERAL PRAC. AND PROC. § 2367 (3d. ed. 2018)

(“[A]s numerous federal courts have made clear, a volun-

tary dismissal without prejudice . . . leaves the situation

as if the action never had been filed.”).

This rule has been applied in the closely comparable

situation where a complaint dismissed without prejudice

is held not to toll the statute of limitations, absent some

evidence of a contrary legislative intent. See Willard v.

Wood, 164 U.S. 502, 523 (1896) (“The general rule in

respect of limitations must also be borne in mind, that if a

plaintiff mistakes his remedy, in the absence of any

statutory provision saving his rights, or where, from any

cause, a plaintiff becomes nonsuit, or the action abates or

is dismissed, and, during the pendency of the action, the

limitation runs, the remedy is barred.”); Jorge v.

Rumsfeld, 404 F.3d 556, 563 (1st Cir. 2005) (“[A] prescrip-

tive period is not tolled by filing a complaint that is sub-

sequently dismissed without prejudice.”); Garfield v. J.C.

Nichols Real Estate, 57 F.3d 662, 666 (8th Cir. 1995) (“A

dismissal without prejudice does not toll a statute of

limitation.”); Robinson v. Willow Glen Acad., 895 F.2d

1168, 1169 (7th Cir. 1990) (holding that a tolling provision

triggered by the “commencement of an action” did not

apply where a complaint was filed but was later voluntar-

ily dismissed); Davis v. Smith’s Transfer, Inc., 841 F.2d

139, 140 (6th Cir. 1988) (per curiam) (“The initial filing of

plaintiff’s suit within the six-month time period is simply

not the effective filing date of plaintiff’s suit because it

was later dismissed by the plaintiff under Fed. R. Civ. P.

41(a). A suit, so dismissed, does not toll nor effect in any

way the continuous running of the applicable statutory

time period.”); Dupree v. Jefferson, 666 F.2d 606, 611

(D.C. Cir. 1981) (“We conclude, then, that the rule against

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 7

tolling . . . applies with equal force to nonprejudicial

dismissals, be they voluntary or involuntary.”); Curtis v.

United Transp. Union, 648 F.2d 492, 495 (8th Cir. 1981)

(“It is our view that Rule 54(b) does not provide an excep-

tion in this case to the rule that the entry of a voluntary

dismissal without prejudice leaves the action as if suit

had never been brought for purposes of the statute of

limitations.”); Bomer v. Ribicoff, 304 F.2d 427, 429 (6th

Cir. 1962) (“In the absence of a statute to the contrary a

party cannot deduct from the period of the statute of

limitations the time during which the action so dismissed

was pending.”).

The panel opinion suggests that this treatment of

dismissals without prejudice is not a uniform rule and

that “for many . . . purposes, the dismissed action contin-

ues to have legal effect.” Panel Op. 23. This is not cor-

rect. The panel indicates only two such claimed

instances: (1) where a dismissal without prejudice does

not bar an award of costs as a sanction for a frivolous

filing, see, e.g., Cooter & Gell v. Hartmarx Corp., 496 U.S.

384, 395–96 (1990), and (2) where the filing is relied on to

establish a controversy between the parties for assessing

declaratory judgment jurisdiction, see TransWeb, LLC v.

3M Innovative Props. Co., 812 F.3d 1295, 1300 (Fed. Cir.

2016). But neither of these is a situation where the issue

is the legal effect of the earlier filing, and the question is

whether the original filing triggers a legal obligation, such

as the start of a time period. In that situation, the cases

are uniform that, absent contrary intent, the earlier

dismissed filing (or in this case service) has no legal effect.

We ruled in Abbott Laboratories v. TorPharm, Inc.,

503 F.3d 1372, 1379 (Fed. Cir. 2007), that “[w]e assume

Congress’s familiarity with general principles of law when

enacting a statute.” In other words, “Congress is pre-

sumed to legislate against the backdrop of existing law.”

Morgan v. Principi, 327 F.3d 1357, 1361 (Fed. Cir. 2003);

accord Cannon v. Univ. of Chi., 441 U.S. 677, 698–99

8 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

(1979). This widespread treatment of voluntary dismis-

sals without prejudice provided the background for the

enactment of section 315(b), and section 315(b) must be

read in light of that background legal principle, so that

the one year time-bar is not triggered if the underlying

infringement action is voluntarily dismissed without

prejudice.

The importance of assessing the statutory language in

the light of background principles is confirmed by Keene

Corp. v. United States, 508 U.S. 200 (1993). There the

statute provided that “the Court of Federal Claims ‘shall

not have jurisdiction’ over a claim, ‘for or in respect to

which’ the plaintiff ‘has [a suit or process] pending’ in any

other court.” Id. at 207 (alteration in original) (quoting 28

U.S.C. § 1500). The question was whether dismissal

without prejudice of the previously filed action eliminated

the jurisdictional bar. Id. at 202–05. The Supreme Court

held that it did not. Id. at 209, 217. The Supreme Court

did not primarily rely on the language of the statute to

resolve the question, but looked instead to another appli-

cable background principle—in that case the principle

that jurisdiction is to be determined at the time the action

(there the Claims Court action) was filed. Id. at 205–07.

“In applying the jurisdictional bar here by looking to the

facts existing when Keene filed each of its complaints, the

Court of Federal Claims followed the longstanding princi-

ple that ‘the jurisdiction of the Court depends upon the

state of things at the time of the action brought.’” Keene,

508 U.S. at 207 (quoting Mollan v. Torrance, 9 Wheat.

537, 539 (1824) (Marshall, C.J.)). In light of that princi-

ple, the Court held that the pendency of the district court

action, at the time the Claims Court action was filed, was

a bar. Id. at 209. So here, the background principle is

that the dismissal of an action without prejudice leaves

the parties as though the action had never been brought.

Third, typically where there is an intention to depart

from the normal treatment of voluntary dismissals with-

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 9

out prejudice, the statute or the rule says so explicitly,

there is a clear legislative decision to depart from the

usual rule, or, as in Keene, there is a conflicting back-

ground principle. For example, Rule 41 itself states that

we should depart from the normal rule when “the plaintiff

previously dismissed any federal- or state-court action

based on or including the same claim, [in which case] a

notice of dismissal operates as an adjudication on the

merits.” Fed. R. Civ. P. 41(a)(1)(B). Similarly, in Flowers

v. Secretary of the Department of Health & Human Ser-

vices, 49 F.3d 1558, 1560–61 (Fed. Cir. 1995), we found

that the Vaccine Act banned claimants from seeking

related benefits “[i]f a plaintiff has pending a civil action

for damages for a vaccine-related injury or death,” 42

U.S.C. § 300aa–11(a)(5), even if that action was subse-

quently voluntarily dismissed without prejudice. Con-

gress originally provided in the act that the co-pending

bar would not apply if the plaintiff “withdraw[s] the

action.” Flowers, 49 F.3d at 1560 (quoting Pub. L. No. 99–

660, tit. III, § 2111(a)(5), 100 Stat. 3755, 3759 (codified at

42 U.S.C. § 300aa–11(a)(5) (1988))). Congress, however,

specifically repealed the exception. We concluded that the

usual rule concerning voluntary dismissals without

prejudice did not apply, because Congress specifically

manifested contrary intent by removing the provision. Id.

at 1561.

Likewise, in Jenkins v. Village of Maywood, 506 F.3d

622 (7th Cir. 2007), the Seventh Circuit recognized that

the statute of limitations for a § 1983 claim could be tolled

by the filing of a suit, later voluntarily dismissed without

prejudice, because the Illinois statute governing the

statute of limitations

provides that if an action is voluntarily dismissed

by the plaintiff, “then, whether or not the time

limitation for bringing such action expires during

the pendency of such action, the plaintiff . . . may

commence a new action within one year or within

10 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

the remaining period of limitation, whichever is

greater . . . after the action is voluntarily dis-

missed by the plaintiff[.]

Id. at 624 (alterations in original) (quoting 735 ILL. COMP.

STAT. ANN. 5/13–217). 3

The fact is that Congress did not include any lan-

guage in section 315(b) addressing voluntary dismissals

without prejudice and here, contrary to the panel opinion,

there is no legislative history supporting an opposing

interpretation, suggesting that Congress intended to

follow the usual rule, that such dismissals render the

complaint a nullity. 4

Finally, the purpose of the statute, as reflected in the

legislative history, supports reading section 315(b)’s time

bar as being inapplicable to voluntary dismissals without

prejudice. One purpose of the statute was to require that

the IPR petitioner file the IPR promptly after receiving

notice of the patentee’s claims through the filing of the

infringement action. The panel opinion notes that Sena-

tor Kyl explained that the “315(b) deadline afford[s]

defendants a reasonable opportunity to identify and

understand the patent claims that are relevant to the

3 Both the panel opinion and Judge Taranto’s con-

curring opinion rely on section 315(a)(2)(C) as supporting

the en banc holding showing that Congress made a delib-

erate choice not to refer to voluntary dismissals. Panel

Op. 15; Concurring Op. 2. Section 315(a)(2)(C) simply

provides that when an IPR has been instituted a later

filed court action must be stayed until the court action is

“dismissed.” It is difficult to see how this can be read as

congressional rejection in section 315(b) of the usual rule

concerning the consequences of a voluntary dismissal.

4 Nor is this like Keene, discussed above, in which

another background principle is predominant.

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 11

litigation.” 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011)

(statement of Sen. Kyl).

While the panel opinion argues that the notice func-

tion supports their interpretation, in fact, the notice

function would not be vindicated if the underlying com-

plaint were voluntarily dismissed without prejudice.

When an action is filed, and then later voluntarily dis-

missed, the accused infringer is led to think that the

controversy has dissipated. In other words, the notice

function of the filing is effectively eliminated by the

dismissal without prejudice.

As discussed earlier, in the comparable situation in-

volving statutes of limitations, while the original filing

provides notice to the defendant, 5 that notice is nullified

by a voluntary dismissal without prejudice, and the

original filing does not toll the statute of limitations. See,

e.g., Willard, 164 U.S. at 523. Here, as in the limitations

context, the underlying purpose of section 315(b) is not

served by filing a complaint that is voluntary dismissed

without prejudice.

The statute was designed to give the petitioner a full

year after receiving notice of the filing of the action to file

the IPR, so that the potential petitioner could be fully

aware of the claims and products at issue in the infringe-

ment litigation. The one year time-bar was intended to go

into effect only after the defendant knows “which claims

will be relevant and how those claims are alleged to read

on the defendant’s products.” 157 Cong. Rec. S5429 (daily

ed. 2011) (statement of Sen. Kyl). Despite the assertions

to the contrary (Panel Op. 15–17), this purpose is thwart-

5 See Crown, Cork & Seal Co. v. Parker, 462 U.S.

345, 352 (1983) (“Limitations periods are intended to put

defendants on notice of adverse claims and to prevent

plaintiffs from sleeping on their rights . . . .”).

12 CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC.

ed by an early voluntary dismissal without prejudice. In

that situation, the defendant is unlikely to have received

the contemplated information, and that information will

be of limited value, as the defendant has been led to

believe that the underlying infringement action will no

longer continue.

So too, one of the purposes of section 315(b) in setting

a one year time period was to bar the filing of an IPR

when, typically, the district court action would have

already consumed the time and attention of the court and

parties. We have pointed out that in the inter partes

review context, the “legislative history confirms . . . ‘Con-

gress’s desire to enhance the role of the PTO and limit the

burden of litigation on courts and parties.’” Murata

Mach. USA, Ltd. v. Daifuku Co., 830 F.3d 1357, 1362

(Fed. Cir. 2016) (quoting NFC Tech. LLC v. HTC Am.,

Inc., 2015 WL 1069111, at *5 (E.D. Tex. 2015)) (discussing

AIA legislative history). However, the situations that

result in a voluntary dismissal without prejudice do not

implicate these concerns. This is because voluntary

dismissals usually come early in the case, typically before

the answer is filed or by agreement from both parties.

Finally, the purposes of section 315(b) will be defeated

if the patentee plaintiff is allowed to manipulate the filing

of infringement actions in order to bar a future IPR

challenge. Indeed, if dismissals without prejudice did not

nullify the underlying complaint, patent owners would

have an incentive to file suits alleging infringement and

subsequently voluntarily dismiss these suits without

prejudice after service of a complaint. Such actions would

effectively begin the one year clock for the accused in-

fringer to file an IPR, even when there was no longer an

underlying infringement action. Congress could not have

intended to provide a mechanism for such manipulation.

Thus, we conclude that, contrary to the en banc hold-

ing, the section 315(b) time-bar should not apply when the

CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. 13

underlying complaint alleging infringement has been

voluntarily dismissed without prejudice.